Ex Parte Hosoya et al

Patent Trial and Appeal Board

Mar 28, 2018

10821323 (P.T.A.B. Mar. 28, 2018)

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.
10/821,323 04/09/2004 Yosuke Hosoya 8837-10 9692
110647 7590
Sheridan Ross P.C.
1560 Broadway
Suite 1200
Denver, CO 80202
EXAMINER
EGGERDING, ALIX ECHET .MEYER
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
sony @ sheridanross.com
edocket @ sheridanross .com
spowers @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSUKE HOSOYA and
YOSHIKATSU YAMAMOTO
Appeal 2017-005599
Application 10/821,323
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In the Opinion, we refer to the published version of the Specification filed
April 9, 2004 (“Spec.”); the Final Action mailed March 24, 2016 (“Final
Act.”); the Advisory Action mailed June 7, 2016 (“Adv. Act.”); the Appeal
Br. filed August 29, 2016 (“App. Br.”); the Corrected Appeal Brief filed
October 19, 2016 (“Corrected App. Br.); the Examiner’s Answer mailed
December 16, 2016 (“Ans.”); and the Reply Brief filed February 16, 2017
(“Reply Br.”).
Appeal 2017-005599
Application 10/821,323
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 4, 6, 10, 11, 14, 16, and 21—31.3 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter of the invention is non-aqueous electrolyte
secondary batteries comprising positive electrode active materials
comprising inner particles having a layered structure and a coating layer
formed on at least parts of the surfaces of the inner particles. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A positive electrode active material comprising inner
particles having a layered structure and a coating layer formed
on at least parts of the surfaces of the inner particles, wherein:
said inner particle is a first compound oxide including a
compound expressed by the formula LiNi(i.X)Mx02, wherein x is
represented by 0.5>x>0.1, and element M is at least one of iron
(Fe), cobalt (Co), manganese (Mn), copper (Cu), zinc (Zn),
chromium (Cr), vanadium (V), titanium (Ti), aluminum (Al),
tin (Sn), boron (B), gallium (Ga), magnesium (Mg), calcium
(Ca), and strontium (Sr);
said coating layer is a second compound oxide
comprising lithium and having a spinel structure in the cubic
system; and
wherein the ratio by weight of the first compound oxide
to the second compound oxide is between 96:4 and 65:35.
Corrected App. Br. 6 (Claims App’x).4
2 Appellants identify Sony Corporation as the real party in interest. App.
Br. 2.
3 Pending claim 17 is allowed. Final Act. 15.
4 Appellants filed a Corrected Appeal Brief containing a summary of the
claimed subject matter and appealed claims on October 19, 2016.
2
Appeal 2017-005599
Application 10/821,323
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Mayer US 6,007,947 Dec. 28, 1999
Park et al. (“Park”) US 2002/0182502 Al Dec. 5, 2002
Spitler et al. US 2003/0017104 Al Jan. 23, 2003
(“Spider”)
Cho et al. (“Cho”) US 2003/0082448 Al May 1,2003
Takahashi et al. US 2003/0124424 Al July 3, 2003
(“Takahashi”)
Johnson et al. US 2003/0180615 Al Sept. 25, 2003
(“Johnson”)
Nakura et al. US 2003/0228519 Al Dec. 11,2003
(“Nakura”)
Naruoka et al. US 6,893,776 B2 May 17, 2005
(“Naruoka”)
Yamaura et al. JP 2002 075368 A Mar. 15,2002
(“Yamaura”)5
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § 103(a):
A. Claims 1,4, 5, 10, 11, and 14 over Mayer in view of Cho and
Yamaura;
B. Claim 6 over Mayer in view of Cho and further in view of Park;
C. Claims 21 and 26 over Mayer in view of Yamaura, and further
in view of Nakura and Johnson;
5 We rely upon the translation made of record in this Application on
September 28, 2015.
3
Appeal 2017-005599
Application 10/821,323
D. Claims 22, 23, and 31 over Mayer in view of Cho, Yamaura,
Nakura and Johnson, and further in view of Spitler and
Naraoka;
E. Claims 24, 25, 29, and 30 over Mayer in view of Cho and
Yamaura, and further in view of Johnson and Takahashi;
F. Claim 27 over Mayer in view of Cho, Yamaura, and Nakura;
and
G. Claim 28 over Mayer in view of Cho, Yamaura, and Nakura,
and further in view of Johnson and Spitler.
Final Act. 3—15; App. Br. 8—31.
In the Answer, the Examiner withdrew the rejection of claim 16 as
obvious over Mayer, Cho, and Yamaura, and issued a new ground of
rejection over Mayer in view of Cho, Yamaura, and Takahashi. Ans. 2, 12.
We address this new ground of rejection at the end of our discussion.
OPINION
Rejection A: obviousness of claims 1, 4, 5, 10, 11, and 14 over Mayer
in view of Cho and Yamaura
Appellants argue claims 1, 4, 5, 10, 11, and 14 as a group. App. Br.
8—7. We select claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Mayer teaches a positive electrode active
material expressed by the formula LixNiyCozMn02, e.g., LiNio.8Coo.2O2, and a
second compound oxide composed of lithium, and optionally titanium, and
having a spinel structure. Final Act. 3. The Examiner further finds that Mayer
teaches a first compound oxide meeting the limitations of claim 1 wherein
x=0.2 and M=Co. Adv. Act.2. The Examiner also finds that Mayer teaches
4
Appeal 2017-005599
Application 10/821,323
that the first and second compound oxides are mixed at a ratio of 0 to 100%
of each, and that the relative amounts of the two oxides should be determined
based on testing such that a balance of engineering trade-offs can be reached.
Final Act. 3. The Examiner determines that it would have been obvious to
one of ordinary skill in the art at the time of the invention to have determined
the optimum relative amounts of the first and second compound oxides
because discovering the optimum value of a result effective variable involves
only routine skill in the art. Id. at 3^4.
Acknowledging that Mayer fails to teach that the first compound oxide
is coated with the second compound oxide, the Examiner finds that both Cho
and Yamaura teach coating a second compound oxide material on a first
compound oxide material, and provides motivation to combine each reference
with Mayer. Id. at 4—5.
Appellants argue that the prior art fails to show the claimed ratios of
the first compound oxide to the second compound oxide, i.e., between 96:4
and 65:35. App. Br. 9; see also id. at 10 (“Mayer, Cho, and Yamaura, alone
or in combination, are each silent regarding the required ratios of the
claimed compounds.”). Appellants then argue that a result cannot be
optimized if it is not a result effective variable. App. Br. 9.
We disagree with Appellants’ position, and find that the ratio of first
to second compound oxides is a result effective variable.
Mayer discloses the results of experiments conducted with cells
employing differing ratios of LiNio.8Coo.2O2 (meeting the requirements of the
first compound oxide) and LiMn204 (meeting the requirements of the second
compound oxide, including the spinel structure (Mayer 9:35—38)). Mayer
col. 23,11. 53—64. Mayer discloses a range of ratios of LiNio.8Coo.2O2 to
5
Appeal 2017-005599
Application 10/821,323
LiMn204, including 60:40 and 70:30. See id. Figure 15C of Mayer shows
that a ratio of 70:30 for LiNio.gCoo^CULiM^CU within the claimed range of
ratios between 96:4 and 65:35, is superior in capacity retention to a ratio of
50:50, 30:70, and 0:100. Mayer Fig. 15C. Mayer explicitly discloses a ratio
within the claimed ratio range and that the ratio affects the property of
capacity retention. See id. at col. 23,11. 53—64, Fig. 15C. Therefore, the
ratio of the first compound oxide to the second compound oxide is a result
effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
Cir. 2012) (“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.”). “[DJiscovery of
an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980).
Appellants argue that the claimed ratios of first and second compound
oxides provide surprising and unexpected results that improve the
disadvantages of the prior art. App. Br. 12. ‘The outcome of optimizing a
result-effective variable may still be patentable if the claimed ranges are
‘critical’ and ‘produce a new and unexpected result which is different in
kind and not merely in degree from the results of the prior art.’” Applied
Mails, 692 F.3d at 1297 (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955). Unexpected results must be established by clear and convincing
evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent
upon appellants to submit clear and convincing evidence to support their
allegation of unexpected property.”); see also McClain v. Ortmayer, 141
U.S. 419, 429 (1891) (conclusive evidence needed to establish new
function); In re Passal, 426 F.2d 409, 412 (CCPA 1970) (“Certainly, at
6
Appeal 2017-005599
Application 10/821,323
least, that ‘clear and convincing evidence’ of unexpected properties required
by this court in In re Lohr ... is lacking.”); In re Lohr, 317 F.2d 388, 392
(CCPA 1963).
A party asserting unexpected results as evidence of non-obviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469-70 (Fed. Cir. 1997). Appellants’ arguments to that effect
cannot take the place of evidence. Id. at 1471; In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Moreover, the burden of proving the results are
unexpected requires Appellants to proffer factual evidence that actually
shows unexpected results relative to the closest prior art, see In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably
commensurate in scope with the protection sought by claim 1 on appeal, In
re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). “[I]t is not enough to show
that results are obtained which differ from those obtained in the prior art:
that difference must be shown to be an unexpected difference.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The showing on which
Appellants rely must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Appellants direct us to the Samples and associated text in the
Specification as supporting surprising and unexpected results for the claimed
ratio of first and second compound oxides. App. Br. 12—15. This evidence
is summarized in Tables 1 and 2 of the Specification, which are reproduced
below:
7
Appeal 2017-005599
Application 10/821,323
TABLE 1
Fit's* cosspoimd oxide
Second
compound oxide
Residua!
capacity l%j
Sample 1 li/Mv, 93 ,.l
Sample 2 kJ.N :5n LiPIlO;, 85.8
Sample 3 lijApOy 86.1
Sasipk 4 92,7
Sample 5 r.-lN.S|j 2;; lAITOr:, 91, t
Sample 4 HIMy; 94,3
•Sample 7 I.i..vTigO](|«st
mixed)
70.4
Sample 8 TKT 68,0
Sample 9 72,5
Table 1 shows the results of the residual capacity6 in Sample 1 to
Sample 9. Spec, f 79. All of the samples in Samples 1—9 wrere prepared at a
ratio of first to second compound oxide of 90:10. Id. Tf 55, 64, 66, 68, 70,
72, 74, 76, 78. The second compound oxide has a spinel structure in the
cubic system in Sample 1, a monoclinic system in Sample 2, and a rhombic
system in Sample 3. Id. Iff 54, 64, 66. The first compound oxide has a
layered rock-salt structure in Samples 5 and 6. Id. fjj 70, 72. The first and
second compound oxides in Sample 7 are mixed: the second compound
oxide does not coat the first compound oxide. Id. f 74.
6 Appellants define “residual capacity” as the residual percentage o l
capacity relative to the initial capacity. Spec, 62.
8
Appeal 2017-005599
Application 10/821,323
TABIJE 2
MPdiig.
(A .B)
Ikvkkk
K'Spi?X':kg f k 1
Sampk I 93.1
Sampk 10 ifhk) 30.4
Saomk 11 /() :;pp 36,6
Simifte 12
Ssmpk 13
PS :3S
95:3
82.9
ms
Stmpk 14
Ssisupk IS
wm
60:44
14J
fSJ
Table 2 shows the results of the residual capacity in Sample 10 to
Sample 15. Id. f 94. Samples 1 and 10-15 were prepared with
LiNi0.70Mn0.30O2 as the first compound oxide and IJUTisO^ as the second
compound oxide. Id. 50-55 and 83-93.
Appellants argue that the results shown in Tables 1 and 2 surprisingly
and unexpectedly show the advantage of (1) the ratio of the first and second
compound oxides (App. Br. 12); and (2) the second compound oxide having
a spinel structure in the cubic system {id. at 15). However, review of the
data does not support the breadth of Appellants’ contentions.
The compound oxides encompassed by the scope of claim 1 include
all second compound oxides comprising lithium and having a spinel
structure in the cubic system in addition to all first compound oxides with
the formula LiNi(i_x)Mx02, wherein x is represented by 0.5>x>0.1, and
element M is at least one of iron (Fe), cobalt (Co), manganese (Mn), copper
(Cu), zinc (Zn), chromium (Cr), vanadium (V), titanium (Ti), aluminum
(Al), tin (Sn), boron (B), gallium (Ga), magnesium (Mg), calcium (Ca), and
strontium (Sr). Therefore, claim 1 is much broader that the minimal data
provided in the Specification. Moreover, we can draw no conclusion from
9
Appeal 2017-005599
Application 10/821,323
the limited data presented in Table 1 on the reason for the differences in
residual capacity between samples; the purported superiority could be a
result of coating instead of mixing two compound oxides, the particular
compound oxides tested, the crystal system of the first or second compound
oxide—or both—or some other reason. There is simply insufficient data to
draw a reasonable conclusion as to why the samples are purportedly
superior. See Spec. 1 80.
In addition, Table 2 provides comparison of ratios of first to second
compound oxides for only one combination of oxides. This data is not
commensurate with the scope of claim 1.
Appellants also argue that the prior art fails to show coating the first
compound oxide with the second compound oxide. App. Br. 15. Appellant
argue that Mayer only mentions mixing, and Cho and Yamaura are silent
regarding the first and second compound oxides. Id. at 15—16. These
arguments are not persuasive because Appellants argue the references
individually. Appellants cannot show non-obviousness by attacking
references individually where, as here, the rejection is based on a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
For the reason above, we sustain the Examiner’s rejection of claim 1.
We also sustain the rejection of claims 4, 5, 10, 11, and 14 over Mayer in
view of Cho and Yamaura, as Appellants do not argue that these claims are
patentable separately from claim 1.
10
Appeal 2017-005599
Application 10/821,323
Rejection B: obviousness of claim 6 over Mayer in view of Cho,
Yamaura, and Takahashi7
Claim 6 depends from claim 1 and further requires that the coating
layer is a mechanofusion coating layer in contact with said surfaces of the
inner particles. Corrected App. Br. 7 (Claims App’x).
The Examiner makes the same findings regarding the disclosures of
Mayer, Cho, and Yamaura as for claim 1. Final Act. 5—6; Ans. 12. The
Examiner finds that these references do not teach that the coating layer is a
mechanofusion coating layer. Final Act. 6. However, the Examiner finds
that Park teaches coating a first compound oxide with a second compound
oxide using mechanofusion, which provide improved coating performance.
Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use the mechanofusion
coating method of Park in the active material of Mayer in view of Cho and
Yamaura in order to improve coating performance. Id.', Ans. 12.
Appellants contend that the combination of compounds mixed by the
mechanofusion mixer in Park (a mixture of lithium compound and
manganese compound on the surface of lithium manganese complex oxide)
is not equivalent to the claimed inner particles having a coating layer formed
on at least parts of the surfaces of the inner particles wherein said coating
layer is a second compound oxide “because of the in finite number of
possibilities provided by the prior art and the unpredictability of the
chemical arts.” App. Br. 18.
7 The Examiner unintentionally omitted Yamaura from Rejection B, but
corrected this error in the Answer. See Final Act. 5—6; Ans. 12.
11
Appeal 2017-005599
Application 10/821,323
The Examiner responds that Appellants fail to argue that it would not
be obvious to use the mechanofusion mixer of Park for mixing the
compound oxides disclosed in Mayer in view of Cho and Yamaura. Ans.
12.
Appellants reply that Park is silent regarding the requirements of
claim 1, from which claim 6 depends. Reply Br. 6. Appellants contend that
one of ordinary skill in the art would understand that Park’s mechanofusion
mixer does not teach or suggest the claimed compound oxides and their ratio
“because of the infinite number of possibilities provided by the prior art and
the unpredictability of the chemical arts. Id.
The Examiner employs Park for teaching use of a mechanofusion
mixer. We agree with the Examiner that Appellants do not dispute that use
of such a mixer would be obvious. Instead, Appellants argue that Park does
not teach limitations that the Examiner finds are disclosed by Mayer in view
of Cho and Yamaura. When a rejection is based on a combination of
references, Appellants cannot show non-obviousness by attacking references
individually. In re Merck, 800 F.2d at 1097. We, therefore, sustain the
rejection of claim 6.
Rejection C: obviousness of claims 21 and 26 over Mayer in view of
Cho and Yamaura, and further in view of Nakura and Johnson
Claim 21 depends from claim 1 and further requires that the first
compound oxide is LiNio.70Mno.30O2 and the second compound oxide is
LuTfO 12. Corrected App. Br. 9 (Claims App’x).
The Examiner repeats the findings regarding the disclosures of Mayer,
Cho, and Yamaura, and acknowledges that they do not teach the claimed
LiNi0.70Mn0.30O2 or LuTfO 12* Final Act. 6. The Examiner finds that Nakura
12
Appeal 2017-005599
Application 10/821,323
discloses LiNio.70Mno.30O2 as a material that is desirable for use as a positive
electrode active material because it can produce a battery with high capacity,
high reliability, and long life. Final Act. 7. The Examiner concludes that it
would have been obvious to use LiNio.70Mno.30O2 as taught by Nakura as the
first compound oxide in the positive electrode active material disclosed by
Mayer, Cho, and Yamaura for these benefits. Id.
The Examiner further finds that Johnson teaches spinel lithium
titanium oxide, specifically LkTfO^, and that it would have been obvious
to use the Li4Ti50i2 disclosed by Johnson as the second compound oxide in
the positive electrode active material disclosed by Mayer, Cho, and Yamaura
to enhance the structural stability of the electrode. Id. at 7.
Appellants argue, inter alia, that the prior art, including Johnson, is
silent regarding LCTisO^ as the second compound oxide. App. Br. 20, 21.
Johnson discloses lithium spinal oxide and lithiated spinal oxide
coatings comprised of LiM'204 or Lii+yM^CL (0