Ex Parte Tsukamoto et al

Board of Patent Appeals and Interferences

Nov 1, 2010

10217967 (B.P.A.I. Nov. 1, 2010)

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.
10/217,967 08/13/2002 Hisashi Tsukamoto Q111-US2 2308
31815 7590 11/02/2010
MARY ELIZABETH BUSH
QUALLION LLC
P.O. BOX 923127
SYLMAR, CA 91392-3127
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
11/02/2010 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HISASHI TSUKAMOTO, CLAY KISHIYAMA,
MIKITO NAGATA, HIROSHI NAKAHARA,
and TIEHUA PIAO
____________________

Appeal 2009-009955
Application 10/217,967
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009955
Application 10/217,967

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 17, 18, 20 through 32, 34 through 48,
and 50 through 54. We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
The subject matter on appeal is directed to, inter alia, a method of
making a battery. Appellants state that "[t]he present invention is directed to
a rechargeable lithium ion battery . . . able to discharge to a very low
voltage, e.g., zero volts, without causing permanent damage to the battery."
Id. Further details of the appealed subject matter are recited in
representative claim 17, which is reproduced below:
17. A method, comprising:
providing components that include a positive electrode, a
negative electrode, and an electrolyte,
the positive electrode including a first active material on
a metal substrate, the first active material including lithium,
the negative electrode including a second active material
on a substrate, the second active material including carbon, and
the electrolyte configured to react with the negative
electrode to form a solid electrolyte interface (SEI) layer, the
SEI layer being susceptible to damage when a voltage potential
exceeding a Film Dissolution Potential (FDP) is applied to the
SEI;
generating a battery that includes the components; and
wherein providing the components includes employing
the Film Dissolution Potential to configure the components
such that when the battery has a zero voltage the positive
electrode and the negative electrode are at a Zero Volt Crossing
Potential (ZCP) that is less than the Film Dissolution Potential
and the Film Dissolution Potential is lower than a maximum
positive operating potential of the battery.

The Examiner maintains the following rejections:
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1) Claims 17, 18, 20-32, 34-48, and 50-54 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement;
2) Claims 17-32, 34-37, 39-48, and 50-53 under 35 U.S.C. § 102(e) as
anticipated by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable
over Wang (US 6,159,636, issued Dec. 12, 2000);
3) Claims 17, 18, 20-27, 29-32, 34-37, 39-48, and 50-53 under 35
U.S.C. § 102(b)2 as anticipated by, or in the alternative under 35 U.S.C. §
103(a) as unpatentable over Yoshino (US 5,631,100, issued May 20, 1997);
and
4) Claims 38 and 54 under 35 U.S.C. § 103(a) as unpatentable over
Wang in view of Linden (HANDBOOK OF BATTERIES, David Linden ed.,
McGraw-Hill, Inc. 1995 (1984)).

REJECTION (1): The § 112, first paragraph rejection

ISSUE
Did the Examiner err in determining that the inventions recited in
claims 17 and 39 are not enabled since the written description does not teach
one skilled in the art how to make and use the full scope of the inventions
without undue experimentation? We decide this issue in the affirmative.

2 We note that Appellants' statement at page 7 of the Appeal Brief that the
claims are rejected under § 102(e) is harmless error since it is apparent from
page 20 of the Appeal Brief and page 3 of the Answer that this rejection
should be under § 102(b).

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PRINCIPLES OF LAW
The scope of enablement “is that which is disclosed in the
specification plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.” Invitrogen Corp. v. Clontech
Labs Inc., 429 F.3d 1052, 1070-1071 (Fed. Cir. 2005).
In addition, the court in Invitrogen stated that
[e]nablement does not require the inventor to foresee every
means of implementing an invention at pains of losing his
patent franchise. Were it otherwise, claimed inventions would
not include improved modes of practicing those inventions.
Such narrow patent rights would rapidly become worthless as
new modes of practicing the invention developed, and the
inventor would lose the benefit of the patent bargain.

Invitrogen, 429 F.3d at 1071.
"When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification of the application." In re Wright, 999 F.2d 1557, 1561-62
(Fed. Cir. 1993).
"Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations." In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). A
number of factors are relevant to whether undue experimentation would
have been required to practice the claimed invention, including "(1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
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of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims." Id.
The quantity of experimentation needed to be performed by one
skilled in the art is only one factor involved in determining whether “undue
experimentation” is required to make and use the invention. In re Colianni,
561 F.2d 220, 224 (CCPA 1977). “[A]n extended period of experimentation
may not be undue if the skilled artisan is given sufficient direction or
guidance.” Id.

ANALYSIS AND CONCLUSION
The Examiner states that
[Appellants' disclosure] does not reasonably provide enablement for
what materials give the claimed relationships, such as a FDP lower
than the maximum positive operating potential of the battery or to
establish a ZCP at a lower level than FDP [as required by claim 17]
. . . . The same argument applies to the DPT of claim 39.

(Ans. 3). In this regard, the Examiner states that "[t]here is no support for
changing the active materials in order to give the claimed relationships."
(Ans. 11).
In addition, the Examiner states that "the skilled artesian [sic, artisan]
would also have to take into consideration the electrolyte . . . various current
collector materials . . . and other elements of the battery resulting in an
extraordinary number of possibilities and clearly undue experimentation."
(Ans. 12). We disagree.
It is well settled that the Examiner bears the initial burden of setting
forth a reasonable explanation as to why the claim scope is not adequately
enabled by Appellants’ disclosure. See Wright, 999 F.2d at 1561-1562. In
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addition, it is well settled that "an extended period of experimentation may
not be undue if the skilled artisan is given sufficient direction or guidance.”
See Colianni, 561 F.2d at 224.
In this case, although the Examiner concludes that undue
experimentation is needed, the Examiner fails to provide any analysis under
the analytical framework set out in In re Wands to determine whether undue
experimentation would be required to practice the claimed invention.
Specifically, the Examiner fails to provide sufficient factual findings
regarding factors such as the amount of direction or guidance presented by
Appellants and the quantity of experimentation. Wands, 858 F.2d at 737.
In this regard, the Examiner's analysis relies heavily on the absence of
examples and also relies on conclusory statements such as, "[the]
extraordinary number of possibilities clearly [requires] undue
experimentation." (Ans. 12).
However, as correctly pointed out by Appellants at pages 10 and 11 of
the Appeal Brief, the Examiner does not provide sufficient findings or
analysis regarding, inter alia, the amount of direction or guidance present in
Appellants' disclosure. In failing to do so, the Examiner’s analysis also does
not provide sufficient findings or analysis regarding whether an extended
period of experimentation is undue given the amount of direction or
guidance present in Appellants' disclosure. See Colianni, 561 F.2d at 224.
For the above reasons, the Examiner erred in determining that the
inventions recited in claims 17 and 39 are not enabled since the written
description does not teach one skilled in the art how to make and use the full
scope of the invention without undue experimentation.
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Accordingly, we reverse the Examiner's rejection of claims 17, 18, 20-
32, 34-48, and 50-54 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.

REJECTIONS (2) and (3)

The 102 rejections

With respect to claims 17 and 39, the Examiner states that
As the materials of the prior art reference are the same as the
corresponding materials of the instant application, they will,
therefore, provide the same results. The prior art inherently
employs the FDP [film dissolution potential] and DPT [damage
threshold potential] in order to prepare a battery that is not
damaged during operation.

(Ans. 5) (emphasis added).
In response, Appellants refer to the Declaration of Hiroshi Nakahara
dated May 18, 2006 (hereinafter the Nakahara Declaration) and argue that
these claimed relationships required by claims 17 and 39 do not necessarily
result "merely by material selection." (App. Br. 14 and 15 and Reply Br. 2).
Specifically, Appellants argue that that "material ratios also determine
the ZCP level and accordingly also determine whether the claimed ZCP
level has been achieved." (App. Br. 14 and 15).
In this regard, Appellants point to the Nakahara Declaration, which
shows, inter alia, experimentally determined ZCP, FDP, and DPT values for
six batteries. Batteries 1-3 are composed of the same materials but each
battery within this group has a different ratio of positive electrode active
materials to the other materials. (See Nakahara Declaration, Table 1).
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Similarly, Batteries 4-6 are composed of the same materials but each battery
within this group has a different ratio of positive electrode active materials
to the other materials. (See Nakahara Declaration, Table 1). The Nakahara
Declaration also shows that, for each battery, the ZCP value is greater than
the FDP and DPT values. Id. In other words, the Nakahara Declaration
shows that the ratio of positive electrode active materials to the other
materials determines whether the claimed relationships are met.
Given the above, we agree with Appellants that Appellants have
properly rebutted the Examiner's finding that Wang's or Yoshino's battery
inherently employs the claimed relationships because Wang's or Yoshino's
battery uses the same materials as Appellants.
In this regard, while using the same materials as Appellants may result
in the claimed relationships, Appellants have shown that using the same
materials as Appellants do not necessarily result in the relationships required
by claims 17 and 39. See In re Oelrich, 666 F.2d 578, 581-582, (CCPA
1981) (holding that “[i]nherency . . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”). Specifically, Appellants have shown
that other factors such as the ratio of positive electrode active materials to
the other materials determine whether the claimed relationships are met.
Accordingly, we reverse the Examiner's rejection of claims 17-32, 34-
37, 39-48, and 50-53 under § 102(e) over Wang and the Examiner's rejection
of claims 17, 18, 20-27, 29-32, 34-37, 39-48, and 50-53 under § 102(b) over
Yoshino.

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The 103 rejections

The Examiner states that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to use the materials taught in
the reference in a process to provide a working battery that is
not damaged during the charge/discharge cycle. The skilled
artesian [sic, artisan] recognizes that using materials, which will
be damaged or destroyed during normal use of the battery, will
limit the function of the battery as compared to the materials
taught in the prior art selected to charge and discharge a battery
efficiently.

(Ans. 5-6).
Appellants argue that neither Wang nor Yoshino would have
suggested employing the film dissolution potential, which is the voltage
above which the SEI layer begins to dissolve, or the damage potential
threshold, which is the voltage above which the battery is permanently
damaged, to configure the battery components to arrive at the claimed
relationships when the battery has a zero voltage as required by claims 17
and 39. (App. Br. 13-24; see also Spec. 2 and 6). We agree.
The Examiner's statement is merely a conclusory statement that
neither directs us to any credible evidence nor articulates any persuasive
reason as to why either of the applied prior art references would have been
modified to arrive at the claimed inventions.
In this regard, Wang teaches a method of forming a lithium
manganese oxide component for use in a secondary battery in order to
increase the battery's specific capacity and capacity retention per cycle.
(Wang, col. 1, ll. 9-10 and col. 3, ll. 29-32). Yoshino teaches the use of a
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lithium-containing composite metal oxide in a secondary battery for
"excellent current efficiency, cycle characteristics, storage characteristics
and safety." (Yoshino, col. 1, ll. 5-17). Neither Wang nor Yoshino,
however, teach a film dissolution potential or a damage potential threshold.
Thus, the Examiner fails to adequately explain why one of ordinary
skill would have employed a film dissolution potential or a damage potential
threshold, each of which is related to a specific voltage at which the battery
or its component is damaged during discharge, to configure Wang’s or
Yoshino’s battery components to have the claimed relationships as required
by claims 17 and 39. (See Spec. 2 and 6).
In addition, in making such a modification, the Examiner has not
provided any basis for a reasonable expectation that the claimed
relationships would have been met by the proposed combination of
teachings. In this regard, the Examiner merely states (Ans. 5) that “it would
have been obvious to . . . use the materials taught in the reference.”
In reference to our above discussion, the Examiner makes no findings
or determinations regarding the ratio of these materials, which determines
the claimed relationships. Indeed, as discussed above with regard to the
anticipation rejections, Appellants have established that merely using the
same materials does not necessarily result in the claimed relationships.
Accordingly, we reverse the Examiner's rejection of claims 17-32, 34-
37, 39-48, and 50-53 under § 103 over Wang and the Examiner's rejection of
claims 17, 18, 20-27, 29-32, 34-37, 39-48, and 50-53 under § 103 over
Yoshino.

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REJECTION (4)

The Examiner relies on the same factual findings and determinations
discussed above in rejection (2) and does not provide any additional findings
or explanation regarding how Linden would have satisfied the disputed
claim feature.
Therefore, for the reasons stated above, we reverse the Examiner's
decision to reject claims 38 and 54 under 35 U.S.C. § 103(a) over Wang and
Linden.

DECISION
The Examiner’s rejections (1) through (4) are reversed.

REVERSED

bar

MARY ELIZABETH BUSH
QUALLION LLC
P.O. BOX 923127
SYLMAR, CA 91392-3127