Ex Parte Kinoshita et al

Board of Patent Appeals and Interferences

Mar 19, 2012

10934705 (B.P.A.I. Mar. 19, 2012)

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.
10/934,705 09/07/2004 Akira Kinoshita SNY-064 3333
20374 7590 03/20/2012
KUBOVCIK & KUBOVCIK
SUITE 1105
1215 SOUTH CLARK STREET
ARLINGTON, VA 22202
EXAMINER
FANTU, YALKEW
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
03/20/2012 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)
Him that he the hearing UNITED STATES PATENT AND TRADEMARK
OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AKIRA KINOSHITA, SHINGO TODE, YASUFUMI
TAKAHASHI, HIROYUKI FUJIMOTO, IKURO NAKANE,
and SHIN FUJITANI
____________________

Appeal 2010-000224
Application 10/934,705
Technology Center 2800
____________________

Before: JOSEPH L. DIXON, JEAN R. HOMERE, and
ANDREW J. DILLON, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000224
Application 10/934,705
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a method of controlling charge and
discharge of non-aqueous electrolyte secondary cell. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method of controlling charge and discharge of either a
non-aqueous secondary cell comprising a positive electrode
including a positive electrode active material containing a
lithium-transition metal complex oxide having a layered
structure and containing at least Ni and Mn as transition metals,
and a negative electrode containing a carbon material as a
negative electrode active material and having an initial charge-
discharge efficiency higher than that of the positive electrode,
or an assembled battery having a plurality of cells each being
said secondary cell, said method comprising:
controlling discharge of the secondary cell or each of the
cells in the assembled battery so that the end-of-discharge
voltage of the secondary cell or each of the cells is 2.9 V or
higher.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hibi
Kusumoto
US 6,208,117
US 6,465,131
Mar. 27, 2001
Oct. 15, 2002
Toshiyuki JP 05-242891 Sep. 21,1993

Appeal 2010-000224
Application 10/934,705
3
REJECTIONS
Claims 1, 2, and 8 stand rejected under 35 U.S.C §102(b) as being
anticipated by Kusumoto or, in the alternative, under 35 U.S.C. § 103(a) as
Kusumoto and Toshiyuki.
Claims 3-7 and 9-15 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kusumoto, Toshiyuki, and Hibi.

ANALYSIS
35 U.S.C. §102
The Examiner maintains that "Kusumoto et al discloses a method of
controlling charge and discharge (col. 2, lines 55-58 and col. 7, lines 65-
68)(thus necessarily a control circuit for claim 2) of either a non-aqueous
secondary cell." (Ans. 3-4).Appellants argue that:
In light of these disclosures, the method of Kusumoto cannot
[sic.] read on the method of claim 1 (or claims 2 and 8) which
requires a non-aqueous secondary cell (or battery having a
plurality of such cells) comprising a positive electrode
including a positive electrode active material containing a
lithium-transition metal complex oxide having a layered
structure and containing at least Ni and Mn as transition metals,
and a negative electrode containing a carbon material as a
negative electrode active material, and in which such non-
aqueous secondary cell (or battery having a plurality of such
cells) including this this specific combination of positive
electrode and negative electrode, end-of-discharge voltage is
controlled to be 2.9 V or higher.

(App. Br. 8-9). We agree with Appellants that Kusumoto does not expressly
or inherently describe the "specific combination of positive electrode and
negative electrode, [and] end-of-discharge voltage is controlled to be 2.9 V
or higher." (Emphasis added). The portion of Kusumoto identified by the
Appeal 2010-000224
Application 10/934,705
4
Examiner provides no support for the Examiner's finding of anticipation
(based upon inherency) for the single step of the method for "controlling
discharge of the secondary cell or each of the cells in the assembled battery
so that the end-of-discharge voltage of the secondary cell or each of the cells
is 2.9 V or higher" of independent claim 1. Rather, the cited portion is
concerned with negative electrode active substances and the charge-
discharge cycle life characteristics. Therefore, the Examiner has failed to
identify a portion of the reference which describes a step of "controlling…."
Therefore, we cannot sustain the rejection of independent claim 1 based
upon anticipation or anticipation based on inherency.

35 U.S.C. §103

The Examiner further maintains that:
as an alternate to the inherency argument, (see the claim 1
rejection below) controlling discharge of the secondary cell
(col. 2. lines 55-58) so that the end-of-discharge voltage of the
secondary cell or each of the cells is 2.9 V or higher (col. 2,
lines 45-55) and a non-aqueous secondary negative electrode
made with carbon, which is a graphite material (col. 2, lines 45-
55, for claim 8).

(Ans. 4). The Examiner identifies the same portions of column 2 for
describing control of discharge. This portion of Kusumoto merely
discloses that "[i]n this case, the final charge voltage is about 3.4 V,
and discharge voltage is about 2.9 V" (Kusumoto col. 2, lines 50-51)
which does not teach or suggest the claimed "controlling discharge of
the secondary cell or each of the cells in the assembled battery so that
Appeal 2010-000224
Application 10/934,705
5
the end-of-discharge voltage of the secondary cell or each of the cells
is 2.9 V or higher" of independent claim 1.

Appellants argue that:
The Office does not identify what modifications to Kusumoto
would be made in view of Toshiyuki. The Office does not
identify a suggestion or motivation to modify Kusumoto in
view of Toshiyuki or to combine the references and does not
show that there would a reasonable expectation of success of
any particular modification.

(App. Br. 10). In the Examiner's responsive arguments at pages 8-9 of
the Answer, the Examiner merely repeats a portion of the rejection regarding
Toshiyuki and "combining Kusumoto and Toshiyuki would have been that
in a non-aqueous battery an electric discharge capacity can be remarkably
increased and thermal stability can be improved by a crystal structure
change." (Answer 9). We find the Examiner's response to fall short of
identifying what modifications to Kusumoto would be made in view of
Toshiyuki to teach or suggest the "specific combination of positive electrode
and negative electrode, [and] end-of-discharge voltage is controlled to be
2.9V or higher." (App. Br. 9, 11). Therefore, Appellants have shown error
in the Examiner's showing of obviousness of independent claim 1 and
dependent claims 2 and 8.
With respect to independent claim 9, Appellants rely upon the same
arguments advanced with respect to independent claim 1 (App. Br. 12-13).
The Hibi reference is merely relied upon by the Examiner to teach a circuit
for preventing over discharge. (Ans. 5-6, 10). Appellants argue that Hibi
does not overcome the insufficiencies of the combination of Kusumoto and
Toshiyuki. (App. Br. 13). While we agree with the Examiner that the Hibi
Appeal 2010-000224
Application 10/934,705
6
reference teaches a circuit for preventing over discharge, we agree with
Appellants that Hibi does not overcome the insufficiencies of the
combination of Kusumoto and Toshiyuki noted above. Therefore,
Appellants have shown error in the Examiner's showing of obviousness of
independent claim 9 and dependent claims 3-7 and 10-15.

CONCLUSIONS OF LAW
Appellants have shown error in the Examiner's showing of
anticipation and obviousness of independent claim 1 and the obviousness of
independent claim 9.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-15 are
reversed.

REVERSED

tkl