Sumitomo Osaka Cement Co., Ltd.

Patent Trials and Appeals Board

Feb 16, 2022

2021000870 (P.T.A.B. Feb. 16, 2022)

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. 14/634,353 02/27/2015 Hiroyuki MINE 20371-135767 8769 42798 7590 02/16/2022 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street, Suite 2100 Chicago, IL 60603-3406 EXAMINER ZHANG, HAIXIA ART UNIT PAPER NUMBER 1723 MAIL DATE DELIVERY MODE 02/16/2022 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 PATENT TRIAL AND APPEAL BOARD Ex parte HIROYUKI MINE, HIROFUMI YASUMIISHI, KOUJI OONO, and TAKAO KITAGAWA Appeal 2021-000870 Application 14/634,353 Technology Center 1700 Before JEFFREY T. SMITH, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 6-11, 18 and 20-26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sumitomo Osaka Cement Co., Ltd. (Appeal Br. 2.) Appeal 2021-000870 Application 14/634,353 2 CLAIMED SUBJECT MATTER The claims are directed to an electrode material comprising electrode active material particles having the carbonaceous film provided thereon. (Spec. ¶ 8.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electrode material comprising: electrode active material particles and a carbonaceous film provided on surfaces of the electrode active material particles, wherein the electrode active material particles having the carbonaceous film provided thereon form the electrode material having a particulate shape, and the carbonaceous film comprises randomly stacked graphene layers, wherein an inflection ratio of a lithium ion migration path in the carbonaceous film is in a range of 1.5 to 32, wherein an average of plane intervals between (002) planes in the graphene layers is 0.3466 nm to 0.370 nm, and wherein a thickness of the carbonaceous film is in a range of 0.5 nm to 5 nm. The Examiner in the Answer maintained the following rejections that are presented for our review: I. Claims 1, 7 and 14 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over claims 1 and 5 of US 9,960,4162 (issued from U.S. Application No. 13/993,901) in view of Ono3 (JP 2008311067 A). II. Claims 1, 4, 6-11, 14, 18 and 20-26 are rejected under 35 U.S.C. §102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. §103 as obvious over Ono. 2 We refer to the published patent for discussion of this rejection. 3 We refer to the English language machine translation of this document that has been presented in this record. Appeal 2021-000870 Application 14/634,353 3 OPINION We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .” (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential))). Obviousness double patenting Claims 1, 7 and 14 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over claims 1 and 5 of US 9,960,416 (issued from U.S. Application No. 13/993,901) in view of Ono. We reverse. The Examiner determined that that all of the limitations of the appealed claims 1, 7 and 14 are not patentability distinct from claims 1 and 5 of US ’416 in view of Ono. (Final Act. 3-5.) The Examiner find US ’416 claims 1 and 5 discloses an electrode material but fails to disclose the carbonaceous film comprises randomly stacked graphene layers having an inflection ratio of a lithium ion migration path in the carbonaceous film is in a range of 1.5-32; an average of plane intervals between (002) planes in the graphene layers is 0.3466 nm to 0.370 nm; and wherein a thickness of the carbonaceous film is in a range of 0.5 nm to 20 nm. Addressing these differences, the Examiner finds Ono teaches an electrode material comprising a carbonaceous film having a thickness that overlaps that of the claimed range and teaches a method of manufacturing Appeal 2021-000870 Application 14/634,353 4 the electrode material that is substantially the same as that of the Applicant’s invention. (Final Act. 3-5.) The Examiner concludes: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the carbonaceous film comprises randomly stacked graphene layers, wherein an inflection ratio of a lithium ion migration path in the carbonaceous film is in a range of 1.5-32, and wherein an average of plane intervals between (002) planes in the graphene layers is 0.3466 nm to 0.370 nm; and wherein a thickness of the carbonaceous film falling in a range of 0.5 nm to 20 nm, for the purpose of providing a high discharge capacity at a high-speed charge/ discharge rate (Ono, [0007]). (Final Act. 5.) Upon consideration of the evidence presented in this rejection, we determine that the Examiner has not explained that the claimed electrode material of US ’416 was produced by methods similar to that of Ono or Applicant’s invention. Thus, the Examiner has failed to adequately explain why it would have been expected that the electrode material of US ’416 was the same as the claimed invention or why it would have been obvious to utilize the process of Ono in formulating the electrode material of US ’416. As a result, an adequate explanation supported by rational underpinnings has not been provided to sustain the Double Patenting rejection. Prior Art Rejection Claims 1, 4, 6-11, 14, 18 and 20-26 are rejected under 35 U.S.C. §102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. §103 as obvious over Ono. We affirm. After review of the respective positions Appellant and the Examiner provide, we determine that Appellant has not demonstrated reversible error Appeal 2021-000870 Application 14/634,353 5 in the Examiner’s rejection under 35 U.S.C. §§102(a)(1)/103. Appellant’s arguments in support of patentability of the appealed claims are based on independent claim 1. (See generally Appeal Br. 15-22.) We limit our discussion to independent claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claims 4, 6- 11, 14, 18 and 20-26 will stand or fall with independent claim 1. The Examiner finds Ono teaches an electrode material comprising a carbonaceous film having a thickness that overlaps that of the claimed range and teaches a method of manufacturing the electrode material that is substantially the same as the method disclosed in Applicant’s Specification and claim 11. Due to the similarity in processing conditions, the Examiner determines that the electrode material of Ono is expected to have the properties recited by independent claim 1. (Final Act. 6-8; Spec. ¶¶ 30-44.) It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed in the prior art, the burden of proof is on the applicant to prove that the prior art product does not inherently or necessarily possess the characteristics attributed to the claimed product. Cf. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (holding that similarity in terms of reactants and reaction conditions amounted to a prima facie case of unpatentability and that the burden was properly shifted to applicants to show that the prior art product does not have the claimed property); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Whether the rejection is based on inherency under 35 U.S.C. § 102 or on obviousness under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. Best, 562 F.2d at 1255. Appellant argues Ono does not inherently disclose the subject matter of independent claim 1 that requires: the carbonaceous film comprises Appeal 2021-000870 Application 14/634,353 6 randomly stacked graphene layers; an inflection ratio of a lithium ion migration path in the carbonaceous film is in a range of 1.5 to 32; an average of plane intervals between (002) planes in the graphene layers is 0.3466 nm to 0.370 nm; and a thickness of the carbonaceous film is in a range of 0.5 nm to 5 nm. Appellant argues Ono’s method of manufacturing the electrode material is not substantially the same as the present invention because Ono does not provide a description or reason to introduce oxygen into an atmosphere during firing as exemplified in application Examples 9 and 10. (Appeal Br. 16-19.) Appellant’s arguments are not persuasive of reversible error. The evidence presented in the Specification does not establish that the introduction of oxygen into the atmosphere during firing is required to obtain the properties of independent claim 1. Specifically, application Examples 4 and 5 do not include the addition of oxygen in the firing atmosphere yet result in electrode materials that have the properties required by the claimed invention. (Spec. ¶¶ 63, 64; Table 1.) Appellant argues that application Example 14 is further evidence that Ono does not inherently disclose the subject matter of independent claim 1 because both Example 14 and Ono utilize polyvinyl alcohol (PVA) and polyethylene glycol (PEG). (Appeal Br. 20-22.) This argument is also not persuasive of reversible error because there are substantial differences in the processing conditions between Ono and Example 14. Appellant has not explained why the results obtained from the firing of a granulated body for 1 hour in nitrogen atmosphere at 700°C (Ono) would have been the same as the firing of a granulated body for 20 hours in a non-oxidative atmosphere including 1 % by volume of oxygen (Example 14.) Appellant has not explained adequately why, despite the Appeal 2021-000870 Application 14/634,353 7 differences in processing conditions, application Example 14 is representative of Ono. Appellant further argues unexpected results are exhibited by Application Examples 4, 5, 9, and 10 that have inflection ratios in a range of 15 to 32 and provided superior discharge capacity ratios at both -10°C and 20°C when compared with Example 14. (Appeal Br. 22.) The evidence relied upon for establishing unexpected results are not persuasive for the reasons set forth by the Examiner. (Ans. 22.) The Application Table 1 does not establish inflection ratios within the range of 1.5 to 32 is necessary to provide superior discharge capacity ratios at both - 10°C and 20°C. Accordingly, we sustain the prior art rejection of claims 1, 4, 6-11, 14, 18 and 20-26 for the reasons the Examiner presents and those we give above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 14 US ’416, Ono 1, 7, 14 1, 4, 6-11, 14, 18, 20-26 102(a)(1)/103 Ono 1, 4, 6-11, 14, 18, 20- 26 Overall Outcome 1, 4, 6-11, 14, 18, 20- 26 Appeal 2021-000870 Application 14/634,353 8 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED