Ex Parte Nagai et al

Patent Trial and Appeal Board

Feb 16, 2018

13522744 (P.T.A.B. Feb. 16, 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.
13/522,744 07/18/2012 Hiroki Nagai 11139.0076-00000 7245
22852 7590 02/21/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
GATEWOOD, DANIEL S
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROKINAGAI, MAASAHIRO MORITA, and
YUKIHIRO OKADA
Appeal 2017-005740
Application 13/522,7441
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 2, 4—7, and 11—14 under 35 U.S.C. §
103(a) as being unpatentable over at least Shizuka (WO 2009/031619 Al,
pub. Mar. 12, 2009; relying upon Shizuka et al. 771 (US 2010/0209771 Al,
pub. Aug. 19, 2010) as its English translation).2
1 Appellants identify the real party in interest as Toyota Jidosha Kabushiki
Kaisha (Appeal Br. 4).
2 The Examiner additionally applied Shizuka 695 (WO 2008/078695 Al
pub. July 3, 2008) relying on Shizuka et al. 200 (US 2011/0003200 Al pub.
Jan. 6, 2011) as its English translation) to dependent claim 12 (Final Action
10; Ans. 6). All paragraph references herein are to the English translation
documents.
Appeal 2017-005740
Application 13/522,744
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A lithium secondary battery comprising
a positive electrode;
a positive electrode collector; and
a positive electrode mix layer on a surface of the
collector; wherein
the positive electrode mix layer includes a positive
electrode active material and a conductive material,
the positive electrode active material is a lithium-nickel
complex oxide including oxides of lithium (Li) and nickel (Ni)
as constituent metal elements,
the positive electrode mix layer has two peaks, large and
small, of differential pore volume over a pore size ranging from
0.01 pm to 10pm, in a pore distribution curve measured by a
mercury porosimeter, and
from among the large and small peaks, a pore size in a
smaller peak B of the differential pore volume is smaller than a
pore size in a larger peak A of the differential pore volume, and
in the pore distribution curve, a total pore volume per
unit mass of the conductive material for pores having a pore
size smaller than a pore size P of a minimum value between the
large and small peaks and encompassing the smaller peak B
satisfies a range of 0.18 cm3/g to 0.8 cm3/g.
Appellants’ arguments focus solely on claim 1 (Appeal Br. 9—17).
Appellants also do not present arguments to separately rejected dependent
claim 12 (Appeal Br. 17). Thus, all the claims stand or fall with claim 1.
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Appeal 2017-005740
Application 13/522,744
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner’s conclusion that the claimed subject matter is unpatentable within
the meaning of § 103 in view of the applied prior art. Appellants’ arguments
do not show error in the Examiner’s obviousness determination.
Accordingly, we will sustain the Examiner’s § 103 rejections, and we add
the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264^-
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellants’ principal arguments are that Shizuka’s disclosure of a
pore distribution curve (e.g., Fig. 61) is directed to a lithium transition
metal-based compound powder per se and not to the positive electrode mix
layer (of powder and a conductive material) on a surface of a collector, and
that any reliance on inherency is improper since various factors may impact
the pore distribution of the mix layer (Appeal Br. 10—16; Reply Br. 2—11).
Even assuming arguendo that Appellants are correct that the pore
distribution discussed in Shizuka is with respect to the lithium-nickel
complex oxide powder per se, Appellants’ arguments are unpersuasive of
error in the Examiner’s rejection.
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Appeal 2017-005740
Application 13/522,744
Shizuka is directed to the importance of having a main peak and a
subpeak of differential pore volume in the material used in the electrode mix
layer, and discusses how the pore distribution impacts the battery operation,
i.e. its capacity and load characteristics (Shizuka, e.g., H 295, 301, 303, 483,
485). One of ordinary level of skill in the art would have readily inferred
from at least these disclosures in Shizuka that the pore distribution of the
mix layer containing the powder on the electrode is a result effective
variable. “A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that
it would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters. In re
Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990); In re Boesch, 617 F.2d
272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Indeed, the ranges disclosed in Shizuka for pore volume of the subpeak
overlap the claimed range (Shizuka 1485).3 Accordingly, a preponderance
of the evidence supports the Examiner’s determination that the subject
matter of claim 1 is unpatentable over Shizuka.
Appellants also argue there is no evidence in the record, other than in
Appellants’ disclosure, that Shizuka “recognize[s] the problems pertinent to
high-rate charge and discharge cycles in rechargeable batteries” and thus
there is no motivation to adjust a pore distribution of the positive electrode
3 While the Examiner relied upon Shizuka 695 for dependent claim 12,
similar disclosure is found in Shizuka regarding the effect of pore size on
battery capacity and load characteristics (compare, Shizuka 695 H 211, 215
to Shizuka H 483, 485). The ranges for subpeak pore distributions of
Shizuka 695 1215 similarly overlap the claimed range.
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Appeal 2017-005740
Application 13/522,744
mix layer (Appeal Br. 16, 17). The problem faced by an applicant is a
relevant factor to take into consideration in an obviousness
determination. However, an invention may be obvious for reasons the
inventor did not contemplate. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
1990) (en banc) (“In particular, the statement [in In re Wright] that a prima
facie obviousness rejection is not supported if no reference shows or
suggests the newly-discovered properties and results of a claimed structure
is not the law.”) (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir.
1988)). As discussed above, Shizuka recognizes the impact that pore size
distribution of the electrode material has on battery operation. Appellants do
not direct us to objective evidence of any secondary considerations, such as
unexpected results, in support of nonobviousness. Dillon, 919 F.2d at 692
(explaining that where the prior art gives reason or motivation to make the
claimed invention, the burden and opportunity to produce evidence such as
unexpected results then falls on an applicant to rebut that prima facie case).
See also Boesch, 617 F.2d 276 (“[Djiscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the
art.”)
As a result, a preponderance of the evidence in the record supports the
Examiner’s rejection of claim 1. Appellants’ arguments do not identify a
reversible error in the Examiner’s rejection. Appellants do not argue any of
the claims separately from claim 1 (Appeal Br. 17).
Accordingly, the Examiner’s § 103 rejections on appeal are affirmed.
DECISION
The Examiner’s decision is affirmed.
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Appeal 2017-005740
Application 13/522,744
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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