Kabushiki Kaisha Toshiba

Patent Trials and Appeals Board

Feb 3, 2022

2021005137 (P.T.A.B. Feb. 3, 2022)

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. 15/688,215 08/28/2017 Kazuomi YOSHIMA 506931US 8974 22850 7590 02/03/2022 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER CREPEAU, JONATHAN ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 02/03/2022 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUOMI YOSHIMA, YASUHIRO HARADA, andNORIO TAKAMI Appeal 2021-005137 Application 15/688,215 Technology Center 1700 BEFORE TERRY J. OWENS, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. BEVERLY A. FRANKLIN, 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, 3-5, 9-14, and 16. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on January 18, 2022. 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 Kabushiki Kaisha Toshiba. Appeal Br. 1. Appeal 2021-005137 Application 15/688,215 2 We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). We do not reach the merits of Rejection 1 (for reasons discussed, infra). CLAIMED SUBJECT MATTER Claims 1 and 16 are illustrative of Appellant’s subject matter on appeal and are set forth below: 1. A secondary battery, comprising: a positive electrode; a negative electrode comprising negative electrode active material particles that insert and extract Li ions; and an electrolyte layer that is arranged between the positive electrode and the negative electrode, wherein the electrolyte layer is formed of a secondary battery composite electrolyte that is a gel-like polymer electrolyte and that comprises inorganic solid particles comprising an inorganic compound having an Li ion conductivity of 1x10-10 S/cm or more at 25 °C and having an average particle diameter of 0.05 µm or more and less than 8 µm and an organic electrolyte, wherein the weight ratio between the organic electrolyte and the inorganic compound is 0.1% or more and 20% or less, wherein, when a mobile Li ion concentration at a contact interface between the inorganic compound and the organic electrolyte is set as CLi(surface), a mobile lithium ion concentration at the center of the inorganic solid particles is set as CLi(bulk), and an Li ion concentration in the organic electrolyte is set as CLi(organic), CLi(surface)>CLi(organic) ≥ CLi(bulk) is satisfied, and Appeal 2021-005137 Application 15/688,215 3 wherein the average thickness of the electrolyte layer is 0.1 μm or more and less than 8μm, and wherein the electrolyte layer, and the positive electrode and the negative electrode are formed such that the surface of the electrolyte layer is in close contact with the surfaces of the positive electrode and the negative electrode along unevennesses thereof. 16. The secondary battery according to claim 1, wherein oxides do not substantially exist on the surface of the electrolyte layer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kazuki JP 2014-203595 A Oct. 27, 2014 Ryoko et al.(“Ryoko”) JP 2012-230810 Nov. 22, 2012 Nagayama et al. (“Nagayama”) JP 5082197 B Sept. 14, 2012 REJECTIONS 1. Claim 16 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 3-5, 9, and 12-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Kazuki. 3. Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Kazuki as applied to claim 1 above, and further in view of Ryoko. Appeal 2021-005137 Application 15/688,215 4 4. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Kazuki as applied to claim 1 above, and further in view of Nagayama. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s art rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. We introduce a new ground of rejection for claim 16 (discussed, infra). Rejection 1 Before we can reach the merits of Rejection 1, the meaning of the claim terms must be definite. The phrase “wherein oxides do not substantially exist on the surface of the electrolyte layer” is vague in that it is uncertain what is the amount of oxides that do not exist on the surface of the electrolyte layer that is encompassed by the claim language. We note that terms of degree are not necessarily indefinite. “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 Appeal 2021-005137 Application 15/688,215 5 (Fed. Cir. 2014) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65-66 (1923) (finding ‘substantial pitch’ sufficiently definite because one skilled in the art ‘had no difficulty . . . in determining what was the substantial pitch needed to practice the invention)). Thus, when a term of degree is used in the claim, it should be determined whether the specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). We therefore look to the Specification for some guidance. Appellant’s Figure 4 depicts negative electrode 13, electrolyte layer 12, and positive electrode 11. Paragraph 0011 of the Specification discloses that electrolyte layer 12 is formed of a secondary battery composite electrolyte that is a gel-like polymer electrolyte and that comprises inorganic solid particles comprising an inorganic compound. The inorganic compound can be the kind of oxides described in ¶ 0012 of the Specification. Paragraph 0034 of the Specification describes how electrolyte layer 12 can be produced. Therein, it is disclosed that, as shown in Figure 3A, a binder dispersion solution (in which inorganic solid particles 121 are dispersed in a solution of the binder), is applied onto positive electrode 11, and inorganic solid particles 121 are provided on the positive electrode 11. Appeal 2021-005137 Application 15/688,215 6 Then, as shown in Figure 3B, organic electrolyte 122 is impregnated onto the positive electrode 11, and heated and mixed to prepare gel-like secondary battery composite electrolyte 123, including organic electrolyte 122 and inorganic solid particles 121. Spec. ¶ 0034. Next, it is described that positive electrode 11 and negative electrode 13 are arranged to face each other and pressed to obtain an electrode body in which the secondary battery composite electrolyte 12 is interposed between the positive electrode 11 and the negative electrode 13, as shown in Figure 4. Spec. ¶ 0034. Paragraph 0037 discloses that since organic electrolyte 122 and inorganic solid particles 121 enter fine recesses of positive electrode 11 and negative electrode 13, electrolyte layer 12 is in close contact with positive electrode 11 and negative electrode 13 without a gap there between. It is further described therein that since interfaces between electrolyte layer 12 and each of positive electrode 11 and negative electrode 13 are favorably formed, ion conductivity through electrolyte layer 12 is improved. The aforementioned disclosure in the Specification does not provide some standard for measuring the degree that the oxides (which form part of the inorganic solid particles that make up electrolyte layer 12) do not exist on the surface of the electrolyte layer.2 Hence, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). In the instant case, in 2 Figure 4 depicts inorganic particles 121A dispersed in electrolyte layer 12, but it is difficult to ascertain what amount of oxides “do not substantially exist on the surface of the electrolyte layer” as recited in claim 16. Appeal 2021-005137 Application 15/688,215 7 view of the absence of such a standard in the current record before us, we determine that claim 16 is indefinite.3 As such, because of the indefiniteness of the claimed subject matter, we are unable to resolve Rejection 1 on its merits. We thus procedurally reverse this rejection. However, we emphasize that our reversal of this rejection is because the claims are indefinite; hence, a decision has not been made based on the merits. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Thus, we introduce a new ground of rejection of claim 16 under the second paragraph of 35 U.S.C. § 112, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention; hence, we reject these claims as running afoul of the requirements of 35 U.S.C. § 112, second paragraph, or 35 U.S.C. § 112(b). Rejections 2-4 We are persuaded by Appellant’s argument that the Examiner has not adequately shown that the electrode structure described in Kazuki inherently has a mobile Li ion concentration as presently claimed for the reasons presented on pages 6-7 of the Appeal Brief and on pages 2-4 of the Reply Brief. We note that an inherency finding is, by its very nature, not based on an expressed disclosure but on that which would have necessarily flowed from the disclosure as understood by one of ordinary skill in the art. 3 On page 9 of the Answer, the Examiner posits why it is believed that the Specification does not provide adequate written description for claim 16. However, we first must ascertain the scope of claim 16 before reaching the written description issue raised by the Examiner in the record. Appeal 2021-005137 Application 15/688,215 8 Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir. 2001)) (In general, a limitation is inherent “if it is the ‘natural result flowing from’ the explicit disclosure of the prior art.”). For the reasons expressed by Appellant in the record, such a showing has not been made in the instant case. We agree with Appellant that there are notable differences in the method employed in making Appellant’s claimed secondary battery versus the method employed in Kazuki (as pointed out by Appellant on page 7 of the Appeal Brief and on pages 2-4 of the Reply Brief). Beginning on page 3 of the Answer, the Examiner does not adequately address this point raised by Appellant. As Appellant states on pages 3-4 of the Reply Brief, the Examiner misses the point and errs in taking the position that the process of making the product is not recited in the claims. In other words, the Examiner must address whether Appellant’s stated position in the record has met the burden to show that the prior art product does not necessarily possess a claimed structural feature, which has not been done in the instant case. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977); cf. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004). We thus reverse Rejections 2-4. CONCLUSION We reverse Rejections 2-4. We do not reach the merits of Rejection 1, and procedurally reverse Rejection 1, and enter a new ground of rejection of claim 16. Appeal 2021-005137 Application 15/688,215 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground of Rejection 16 112 Written Description 16 16 112 Indefiniteness 16 1, 3-5, 9, 12-14 103 Kazuki 1, 3-5, 9, 12-14 10 103 Kazuki, Ryoko 10 11 103 Kazuki, Nagayama 11 Overall Outcome 1, 3-5, 9, 10,11, 12-14, 16 16 DECISION We reverse the Examiner’s § 103 rejections (Rejections 2-4). We do not reach the rejection of claim 16 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement (Rejection 1), and procedurally reverse Rejection 1. Claim 16 is newly rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to Appeal 2021-005137 Application 15/688,215 10 the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . REVERSED NEW GROUND OF REJECTION (37 C.F.R. §41.50(b))