Ex Parte Sasaoka et al

Patent Trial and Appeal Board

Aug 31, 2016

12034265 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/034,265 02/20/2008 Hideo SASAOKA
22852 7590 09/02/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08009.0014 7831
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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 HIDEO SASAOKA, RYUUICHI KUZUO,
ATSUSHI FUKUI, MITSUKUNI KONDOU,
SHIN IMAIZUMI, KENSUKE NAKURA, and
SHUJI TSUTSUMI
Appeal2015-001373
Application 12/034,265
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
Appellants2 filed an appeal under 35 U.S.C. § 134 from the
Examiner's decision finally rejecting claims 1, 13, 14, and 16-18. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision refers to Appellants' Specification (Spec.) filed September
13, 2011, Appellants' Appeal Brief (Appeal Br.) filed August 5, 2014, the
Examiner's Answer (Ans.) mailed September 10, 2014, and Appellants'
Reply Brief (Reply Br.) filed November 7, 2014.
2 Appellants identify the real parties in interest as Sumitomo Metal Mining
Co., Ltd. and Panasonic Corporation. Appeal Br. 1.
Appeal2015-001373
Application 12/034,265
STATEMENT OF THE CASE
The subject matter on appeal relates to cathode active materials for a
nonaqueous secondary battery (see, e.g., claim 1 ). Appellants disclose that
as consumer electronic devices become more portable there is a high
demand for secondary batteries that are compact, lightweight, and have a
high energy density. Spec. 1:12-15. Appellants disclose lithium composite
oxides, particularly lithium nickel oxides, have been considered as a cathode
active material in a lithium secondary battery but such oxides have low
crystal thermal stability and problems with their cycle characteristics and
high temperature storage characteristics. Id. at 2:4-18. In view of this,
Appellants disclose a lithium oxide having good cycle characteristics,
thermal stability, and high charge and discharge capacity as a cathode active
material. Id. at 6: 10-14.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. The limitations at issue are italicized:
1. A cathode active material for a nonaqueous secondary
battery mainly comprising:
a lithium nickel composite oxide that is represented by the
compositional formula LiNi1-aMa02; wherein
M is at least one kind of element selected from among a
transitional metal other than Ni, a group 2 element and group 13
element;
'a' is within the range 0.01 :Sa :S 0.5,
the cathode active material further compnsmg fine
particles of a manganese composite oxide that contains lithium,
wherein the fine particles of the manganese composite oxide that
contains lithium are needle shaped and/or plate shaped fine
particles,
wherein the lithium nickel composite oxide is composed
of spherical shaped powder compnsmg secondary particles
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Application 12/034,265
having an average particle radius of greater than or equal to 8 µm
and less than or equal to 20 µm, each of the secondary particles
formed with aggregated primary particles having an average
particle radius of greater than or equal to 1 µm and less than or
equal to 3 µm,
wherein the fine particles of the manganese composite
oxide that contains lithium adhere to a surface of the primary
particles such that the fine particles adhere to a surface of the
spherical shaped powder of the lithium nickel composite oxide
as an aggregate, and
wherein a manganese coating ratio D(s), which is an
atomic ratio, (Mnl(Ni + M)), between Mn in the manganese
composite oxide that contains lithium, and the Ni and the element
Min the lithium nickel composite oxide, is 0. 003 to 0. 02.
Appeal Br. 11.
The claims on appeal stand rejected as follows:
(1) claims 1, 13, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Lee3 in viev'l1 of Ohzuku,4 Kitahara,5 and Kv'l1eon; 6
(2) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Lee,
Ohzuku, Kitahara, and Kweon and further in view of Arai; 7 and
(3) claim 18 under 35 U.S.C. § 103(a) as unpatentable over Lee,
Ohzuku, Kitahara, and Kweon and further in view of Okahara. 8
3 Lee et al., US 2002/0076613 Al, published June 20, 2002 ("Lee").
4 Ohzuku et al., US 6,551,744 Bl, issued April 22, 2003 ("Ohzuku").
5 Kitahara et al., JP 2000-223111 A, published August 11, 2000, as
evidenced by the English Abstract and machine translation ("Kitahara").
6 Kweon et al., US 2003/0073004 Al, published April 17, 2003 ("Kweon").
7 Arai et al., Electrochemical and Thermal Behavior of LiNi1-zMz02 (M =
Co, Mn, Ti), J. Electrochem. Soc. Vol. 144, No. 9, 3117-3125 ("Arai").
8 Okahara et al., US 2003/0068561 Al, published April 10, 2003
("Okahara").
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Application 12/034,265
ANALYSIS
The dispositive issue before us in this appeal is whether the Examiner
reversibly erred in concluding that it would have been obvious to optimize
the manganese coating ratio, D(s), in Lee, as modified by Ohzuku and
Kitahara, via routine experimentation to obtain a desired battery
performance and thermal stability based on the teachings of Kweon. We
answer this question in the affirmative and, therefore, will not sustain the
Examiner's rejections.
The Examiner finds the proposed combination of Lee, Ohzuku, and
Kitahara does not disclose a value for D(s) in the range of 0.003 to 0.02
required in claim 1. Ans. 5. Nonetheless, the Examiner finds that because
the cathode active material of Lee includes both the manganese composite
oxide and the lithium nickel composite oxide, the material of Lee would
necessarily have a value of D(s). Id. at 10. In addition, the Examiner finds
D( s) relates to the amount of the surface coating of manganese composite
oxide in relation to the amount of the lithium nickel composite oxide, with
the ratio increasing as the thickness of the coating of manganese composite
oxide increases. Id. at 5, 10. The Examiner then turns to Kweon, finding
that K weon discloses a relationship between a thickness for a coating of a
battery material and battery performance, with the effect of the coating being
insufficient if the coating is too thin and battery performance diminishing if
the coating is too thick. Id. In view of this, the Examiner finds battery
performance and thermal stability are variables that can be modified by
adjusting the ratio D(s). Id. at 5, 10-11. As such, the Examiner concludes it
would have been obvious to optimize the ratio D(s) via routine
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Application 12/034,265
experimentation to obtain a desired battery performance and thermal
stability. Id.
Appellants contend the Examiner has not established a prima facie
case of obviousness, in particular for the manganese coating ratio, D(s),
which is an atomic ratio, (Mn/(Ni + M)), between Mn in the manganese
composite oxide that contains lithium, and the Ni and the element M in the
lithium nickel composite oxide, is 0.003 to 0.02, as recited in claim 1.
Appeal Br. 7. Appellants further assert that although Kweon discloses a
relationship between the thickness of its coating and battery performance,
this is not a disclosure of the ratio D(s) recited in claim 1. Id.
Appellants' arguments are persuasive. As argued by Appellants (id.),
the coating material of Kweon is not directed to a manganese coating oxide.
Moreover, Kweon does not disclose or suggest the coating material would
satisfy the values of D(s) recited in claim 1. Therefore, Kweon does not
provide any guidance about modifying the thickness of a coating for a
battery material, particularly a coating including a manganese composite
oxide, to affect the ratio D( s) or provide any guidance about modifying the
ratio D(s) to affect battery performance.
"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971). However, a fact
finder must be aware "of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning." KSR Int 'l Co. v.
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Application 12/034,265
Teleflex Inc., 550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co.,
383 U.S. 1, 36 (1966) (warning against a "temptation to read into the prior
art the teachings of the invention in issue")).
Here, the Examiner does not rely upon knowledge that was within the
level of ordinary skill at the time the claimed invention was made when the
Examiner finds there is a relationship between coating thickness and D(s).
Although the Examiner finds Kweon discloses a relationship between the
thickness of a coating and battery performance, the Examiner does not find
Kweon, or any of the other cited references, discloses a relationship between
coating thickness and D(s), as recited in claim 1.
Nor does the Examiner rely upon prior knowledge when the Examiner
finds, in view of Kweon's disclosed relationship between coating thickness
and battery performance, there is a relationship between D(s) and battery
performance and concludes it would have been obvious to optimize the ratio
D(s) to provide a desired battery performance. Instead, the Examiner uses
ex post facto reasoning regarding the nature of D(s) and coating thickness
that relies upon impermissible hindsight by finding there is a relationship
between coating thickness and D(s), and therefore a relationship between
D(s) and battery performance, when there is no prior knowledge in the
record to support these findings. As a result, the Examiner has not met the
initial burden of setting forth a prima facie case of obviousness for claim 1
under 35 U.S.C. § 103 over Lee, Ohzuku, Kitahara, and Kweon.
Claims 13, 16, and 1 7 depend from claim 1. For the reasons set forth
above, the rejection of claims 1, 13, 16, and 17 under 35 U.S.C. § 103 over
the combination of Lee, Ohzuku, Kitahara, and Kweon is not sustained.
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The remaining § 103 rejections rely on the same combination of Lee,
Ohzuku, Kitahara, and K weon, and have the same deficiencies as the § 103
rejection of claim 1. Although each of the remaining§ 103 rejections also
relies on additional prior art references, the Examiner does not rely on these
added references to remedy the above-noted deficiencies in the combination
of Lee, Ohzuku, Kitahara, and Kweon. Therefore, we likewise will not
sustain the § 103 rejections of claims 14 and 18.
CONCLUSION
We do not sustain the Examiner's rejections.
DECISION
The Examiner's decision rejecting claims 1, 13, 14, and 16-18 under
35 U.S.C. § 103(a) over Lee, Ohzuku, Kitahara, and Kweon, alone or further
in view of Arai or Okahara, is reversed.
REVERSED
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