TOYOTA JIDOSHA KABUSHIKI KAISHADownload PDFPatent Trials and Appeals BoardNov 3, 20202020003321 (P.T.A.B. Nov. 3, 2020) Copy Citation 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. 14/897,332 12/10/2015 Naoki OSADA 168969 1066 25944 7590 11/03/2020 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER THOMAS, BRENT C ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte NAOKI OSADA, SHIGENORI HAMA, and TOMOYA SUZUKI __________ Appeal 2020-003321 Application 14/897,332 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 9–25. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on October 20, 2020. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Toyota Jidosha Kabushiki Kaisha. Appeal Brief dated September 12, 2019 (“App. Br.”), at 1. Appeal 2020-003321 Application 14/897,332 2 The Appellant discloses that “[t]he present invention relates to a sulfide solid electrolyte material having a high Li ion conductivity.” Spec. ¶ 1. The claimed material comprises, inter alia, a high Li ion conducting phase having peaks at 2θ = 20.2° and 23.6° in an X-ray diffraction measurement using a CuKα ray. The Appellant discloses that “[t]hose peaks are the peak of a crystal phase with a high Li ion conductivity.” Spec. ¶ 29. The Appellant refers to that crystal phase as “a high Li ion conducting phase.” Id. The claimed material also excludes a low Li ion conducting phase having peaks at 2θ = 21.0° and 28.0°. The Appellant discloses that a high Li ion conducting phase having peaks at 2θ = 20.2° and 23.6° and a low Li ion conducting phase having peaks at 2θ = 21.0° and 28.0° was known in the art at the time of the Appellant’s invention. Spec. ¶ 6. According to the Appellant, it was difficult, however, to increase the Li ion conductivity of the material. Id. As for ion conductivity, the Appellant discloses that “it is preferable that the high Li ion conducting phase has high crystallinity.” Id.; see also Spec. ¶ 69 (disclosing that enhancing the crystallinity of a high Li ion conducting phase results in high Li conductivity). However, [in the prior art material] when the heat treatment temperature is increased or heat treatment time is extended in order to have higher crystallinity, a low Li ion conducting phase is generated so that it is difficult to increase the Li ion conductivity. Furthermore, when the heat treatment is carried out at the condition at which a low Li ion conducting phase is not generated, the crystallinity of a high Li ion conducting phase cannot be increased. Spec. ¶ 6. The Appellant discloses that “by shifting the tiny exothermic peak [of a low Li ion conducting phase] to a high temperature side, crystallinity of a high Li ion conducting phase can be increased without generating a low Li ion conducting Appeal 2020-003321 Application 14/897,332 3 phase” and “crystallinity of a high Li ion conducting phase can be increased compared to a related art.” Spec. ¶ 8. The sulfide solid electrolyte material of the Appellant’s invention is said to be “preferably obtained by forming a sulfide glass based on amorphization of a raw material composition and performing a heat treatment of the sulfide glass.” Spec. ¶ 41. [T]he sulfide glass is preferably a material satisfying Tcx – Tc1 ≥ 55°C, when the high Li ion conducting phase is c1, the low Li ion conducting phase is cx, and, in differential thermal analysis, temperature of the exothermic peak of c1 is Tc1 and temperature of the exothermic peak of cx is Tcx . . . . Spec. ¶ 42. According to the Appellant, when there is a large difference between Tcx and Tc1, a low Li ion conducting phase is not produced and the crystallinity of a high Li ion conducting phase can be increased. Spec. ¶ 81. The result is said to be a sulfide solid electrolyte material with high Li ion conductivity. Spec. ¶ 69. Claim 9 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 9. A sulfide solid electrolyte material comprising an ion conductor having Li, P and S, and having a PS43- structure as a main component of an anion structure, LiI, and at least one of LiBr and LiCl, wherein the sulfide solid electrolyte material contains a high Li ion conducting phase having peaks at 2θ = 20.2° and 23.6°, does not contain low Li ion conducting phase having peaks at 2θ = 21.0° and 28.0° in an X-ray diffraction measurement using a CuKα ray, and has a half width of the peak at 2θ = 20.2° of 0.51° or less. App. Br., Claims Appendix A-1. The claims on appeal stand rejected as follows: Appeal 2020-003321 Application 14/897,332 4 (1) claims 9–14 and 16–20 under 35 U.S.C. § 103 as unpatentable over Aburatani et al.;2 (2) claim 15 under 35 U.S.C. § 103 as unpatentable over Aburatani in view of Kamiya et al.;3 (3) claims 21 and 22 under 35 U.S.C. § 103 as unpatentable over Aburatani in view of Tsuchida et al.;4 and (4) claims 23–25 under 35 U.S.C. § 103 as unpatentable over Aburatani in view of Ohtomo et al.5 B. DISCUSSION The Examiner finds Aburatani discloses a sulfide solid electrolyte material as recited in claim 9, with the exception of the claimed peak angles of a high Li ion conducting phase and the absence of the claimed peak angles of a low Li ion conducting phase.6 Final Act. 3–4.7 Nonetheless, the Examiner finds Aburatani teaches optimizing high Li ion conductive phases (corresponding to the claimed peaks) to improve conductivity.8 Final Act. 4 (citing Aburatani ¶¶ 42, 151). More specifically, the Examiner finds: 2 US 2015/0207170 A1, published July 23, 2015 (“Aburatani”). 3 US 2011/0065007 A1, published March 17, 2011 (“Kamiya”). 4 US 2010/0273062 A1, published October 28, 2010 (“Tsuchida”). 5 WO 2012/026238 A1, published March 1, 2012 (“Ohtomo”). 6 Claim 9 excludes a low Li ion conducting phase having peaks at 2θ = 21.0° and 28.0°. Claim 9, however, does not exclude a low Li ion conducting phase having peaks other than those recited in claim 9. 7 Final Office Action dated March 1, 2019. 8 The Examiner also finds Aburatani teaches a composition and a method of production that are substantially similar to the claimed invention. Final Act. 4, 7. Although “inherency may supply a missing claim limitation in an obviousness analysis,” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014), the Examiner does not rely on inherency in the obviousness rejection Appeal 2020-003321 Application 14/897,332 5 [Aburatani] teaches that the conductive phase peaks are present in an amount of 70% or more (which may include 100%) and that the non- conductive phase peaks are present in an amount of 30% or less (which may include 0%). Therefore Aburatani would obviate optimizing an electrode composition to obtain a composition with no low Li ion conducting phases which would have no corresponding low Li ion conducting phase peaks. Final Act. 4. Referring to paragraphs 150 and 151 of Aburatani, the Appellant argues that “Aburatani merely describes that the area ratio of the peaks of PS43- and P2S74- can be high and that the area ratio of P2S64- can be low” and “does not contemplate optimizing the structure of the crystals (i.e., the peaks) themselves.” App. Br. 10– 11. In response, the Examiner finds that “the primary difference between the Aburatani reference and the instant application is that Aburatani relies upon Raman spectroscopy for characterization and the instant application relies upon X-ray diffraction for characterization.” Ans. 11. However, an examination of the Appellant’s Specification reveals that the Appellant, like Aburatani, uses Raman spectroscopy to determine the ratio of an anion structure in a composition. The Appellant discloses: [T]he expression “has an ortho composition” . . . indicates a composition in which an anion structure (PS43- structure) of an ortho composition is included as a main component. The ratio of the anion structure of an ortho composition is preferably 60 mol% or more, more preferably 70 mol% or more, even more preferably 80 mol% or more, and particularly preferably 90 mol% or more, relative to the entire anion structure of an ion conductor. Incidentally, the ratio of on appeal. See Examiner’s Answer dated January 27, 2020 (“Ans.), at 11 (explaining that “inherency is not relied upon”). Therefore, any finding by the Examiner that Aburatani’s method necessarily results in a material comprising the phases recited in claim 9 is not before us on appeal. Appeal 2020-003321 Application 14/897,332 6 the anion structure of an ortho composition can be determined by Raman spectroscopy . . . . Spec. ¶ 36. In contrast, the Appellant uses X-ray diffraction to measure the peaks of the conducting phases.9 Spec. ¶¶ 29–30. Aburatani uses Raman spectroscopy to identify a mixed peak of three components, i.e., PS43-, P2S74- and P2S64-. Aburatani ¶ 142. Aburatani discloses that PS43- and P2S74- are components having a high conducting performance and the total of the area ratios of a peak corresponding to PS43- and a peak corresponding to P2S74- (PS43-+ P2S74-) is 70 area % or more. Aburatani ¶ 151. Relying on optimization, the Examiner finds that “one of ordinary skill in the art would obtain a material which possesses the claimed structure and exhibits the claimed properties if analyzed with X-ray diffraction.” Ans. 12. “[T]he discovery of an optimum value of a variable in a known process is normally obvious.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977). An exception to that rule, however, is where the parameter sought to be optimized was not recognized to be a result-effective variable. Id. The Examiner relies on paragraphs 139–141 of Aburatani to show that time and temperature “impact the end crystal structure” and thus are result-effective variables. Ans. 11–12. Paragraph 139 of Aburatani states that “[t]he temperature at the time of crystallization may be appropriately determined according to an intended crystal structure.” Aburatani ¶ 139; see also Aburatani ¶ 141 (stating that heating time may be changed according to the intended crystal structure). For example, Aburatani discloses that “[i]n order to obtain a Li3PS4 crystal structure, the crystallization temperature is preferably 80° C. or higher and 250° C. or lower, 9 Similarly, Aburatani uses X-ray diffraction (XRD) to measure crystal patterns. See, e.g., Aburatani ¶¶ 167, 170, 181, 184. Appeal 2020-003321 Application 14/897,332 7 more preferably 100° C. or higher and 220° C. or lower.” Aburatani ¶ 140. Aburatani, however, does not disclose that temperature (or time) also affects the peaks of the high and low Li ion conductive phases of that material. In that regard, the evidence of record shows that a crystalline form of Li3PS4 does not necessarily contain a high Li ion conducting phase having a peak at 2θ = 23.6° as recited in claim 9. Naoki Osada Declaration dated January 15, 2018, ¶ 8 (stating that “[a]s shown in the [attached] XRD spectrums, the two crystalline forms of Li3PS4 do not have a high Li ion conducting phase having a peak at 2θ =23.6°” (emphasis omitted)). Thus, although Aburatani teaches that optimizing temperature and time in the disclosed method results in an intended crystal structure, such as a Li3PS4 crystal structure, the evidence of record does not support a finding that temperature and time were also known to affect the peaks of the high and low Li ion conducting phases of Aburatani’s material. In sum, the Examiner has not shown that a sulfide solid electrolyte material having the peaks recited in claim 9 would have been obvious to one of ordinary skill in the art based on the teachings of Aburatani. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (the examiner bears the initial burden of presenting a prima facie case of unpatentability). Therefore, the obviousness rejection of claims 9–14 and 16–20 is not sustained. The Examiner’s reliance on Kamiya, Tsuchida, and/or Ohtomo in the obviousness rejections of dependent claims 15 and 21–25 does not cure the deficiencies in Aburatani identified above. Therefore, the obviousness rejections of claims 15 and 21–25 also are not sustained. C. CONCLUSION The Examiner’s decision is reversed. Appeal 2020-003321 Application 14/897,332 8 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9–14, 16–20 103 Aburatani 9–14, 16–20 15 103 Aburatani, Kamiya 15 21, 22 103 Aburatani, Tsuchida 21, 22 23–25 103 Aburatani, Ohtomo 23–25 Overall Outcome 9–25 REVERSED Copy with citationCopy as parenthetical citation