Ex Parte ABE et al

Patent Trial and Appeal Board

Sep 12, 2013

11927102 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/927,102 10/29/2007 Koji ABE 740709-585 5516
22204 7590 09/12/2013
NIXON PEABODY, LLP
401 9TH STREET, NW
SUITE 900
WASHINGTON, DC 20004-2128
EXAMINER
ALEJANDRO, RAYMOND
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
09/12/2013 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 KOJI ABE,
TAKAYUKI HATTORI, and YASUO MATSUMORI
____________

Appeal 2012-009354
Application 11/927,102
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY T. SMITH, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009354
Application 11/927,102

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over
JP ‘8452 in view of Gagné3 or Kerr,4 and further in view of Appel.5,6 We have
jurisdiction under 35 U.S.C. § 6(b).7
The invention relates to “a lithium primary or secondary battery showing
improved battery performances such as good cycle performance, a high electric
capacity, good storage endurance, and a high electric conductivity.” (Spec.8 3:24-
28.) Claim 1, the sole independent claim on appeal, is representative of the
invention, and is reproduced below from the Claims Appendix to the Appeal Brief:
1. A lithium battery comprising a positive electrode, a negative
electrode and a non-aqueous electrolytic solution comprising a non-
aqueous solvent and an electrolyte selected from the group consisting
of LiPF6, LiBF4, LiAsF6, LiClO4, LiOSO2CF3, LiN(SO2CF3)2,
LiN(SO2C2F5)2, LiC(SO2CF3)3, LiPF4(CF3)2, LiPF3(CF3)3,
LiPF3(C2F5)3, LiPF5(iso-C3F7), LiPF4(iso-C3F7)2, and LiBF3(C2F5)
which contains 0.01 to 3 wt.% of a nitrile compound and 0.2 to 3
wt.% of an S=O group-containing compound.
Having fully considered the arguments advanced by Appellants in support of
patentability over the combined teachings of the references, we agree with
Appellants that the facts and reasons relied on by the Examiner are insufficient to
support a finding that one of ordinary skill in the art would have been motivated to
modify JP ‘845 to use a nitrile compound in the amount claimed based on Gagné’s

1 Final Office Action mailed May 12, 2011.
2 JP 09-161845 published Jun. 20, 1997 (machine translation of record).
3 US 4,475,994 issued Oct. 9, 1984.
4 US 6,045,952 issued Apr. 4, 2000.
5 US 6,489,064 B2 issued Dec. 3, 2002.
6 Appeal Brief filed Feb. 13, 2012 (“App. Br.”).
7 An oral hearing was held on Sep. 5, 2013.
8 Specification filed Oct. 29, 2007.
Appeal 2012-009354
Application 11/927,102

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disclosure that a nitrile compound assists stabilization of a superoxide ion in a
system for separation of oxygen from a gaseous mixture. Accordingly we do not
sustain the rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over
JP ‘845 in view of Gagné and Appel. However, we are not convinced of reversible
error in the Examiner’s rejection of claims 1-11 under 35 U.S.C. § 103(a) as
unpatentable over JP ‘845 in view of Kerr and Appel. Accordingly, we sustain this
ground of rejection for the reasons stated below.
The Examiner finds “JP’845 discloses a non-aqueous electrolyte secondary
battery comprising a non-aqueous electrolyte solution (TITLE) including organic
solvents and a lithium compound dissolved (the electrolyte) therein
(ABSTRACT).” (Ans.9 5.) JP ‘845 discloses that the solvent may include one or
more (JP ‘845 [0026], cited in Ans. 7) of “cyclic carbonate, cyclic ester, chain
ester, cyclic ether, chain ether, and nitrile” (JP ‘845 [0015], cited in Ans. 7). The
Examiner concedes JP ‘845 “does not expressly disclose the specific amount of the
nitrile compound.” (Ans. 7.)
The Examiner finds Kerr discloses “organic electrolyte electrochemical
storage cells (COL 1, lines 15-20/ COL 2, lines 45-50) such as lithium cells
containing an organic liquid electrolyte (COL 4, lines 40-43); the additive may be
either used in a primary or secondary cell (COL 4, lines 22-32).” (Id.) According
to Kerr, “[e]lectrochemical storage batteries of all types are susceptible
to damage due to overcharging or over discharging[,] . . . [o]vercharging of an
electrochemical storage cell in a battery [being] defined as charging beyond a
cell’s capacity, or at a rate greater than the cell’s ability to accept such charge.”
(Kerr col. 1, ll. 21-25.) Kerr discloses an “electrochemical cell having an anode, a
cathode, an organic liquid or solid polymer electrolyte, and a redox shuttle additive

9 Answer mailed Apr. 2, 2012.
Appeal 2012-009354
Application 11/927,102

4
to protect the cell against overcharging” (id. at col. 2, ll. 46-49), one of the
preferred forms of the redox shuttle additive being the lithium salt of a di-anisole
compound (id. at col. 3, ll. 15-16). Kerr discloses that “[t]o facilitate mixing the
redox shuttle additive with the other constituents of the solid electrolyte or cathode,
the di-anisole may be mixed with a solvent such as acetonitrile, glyme, or
glutaronitrile, in a concentration ranging from about 0.1 wt. % to about 1 wt. % of
the total weight of the di-anisole redox shuttle additive/solvent.” (Id. at col. 9,
ll. 52-57.) According to Kerr, “[t]he di-anisole redox shuttle additive should be
added to the cell in an amount ranging from about 0.01 wt. % to about 5 wt. % of
the entire weight (including the redox shuttle additive) of the solid polymer
electrolyte.” (Id. at ll. 58-60.)
The Examiner finds one of ordinary skill in the art at the time of Appellants’
invention would have been motivated to incorporate a redox shuttle additive into
the JP ‘845 battery to provide overcharge protection to the cell. (Ans. 8.) The
Examiner determines “it would have been obvious to one skilled in the art at the
time the invention was made to use the specific amount of the dinitrile compound
of Kerr [] in the battery of [] JP’845 because Kerr [] teaches a solvent such as
dinitrile solvents including glutaronitrile, among others, used in the specifically
claimed amount facilitates mixing redox additive with other constituents of the
electrolyte and/or cathode.” (Id.)
The Examiner concedes JP ‘845 does not disclose using a sulfite compound
in the electrolytic solution. (Id. at 9.) The Examiner finds Appel discloses
“electrolyte systems for lithium batteries with enhanced safety.” (Id.) The
Examiner finds Appel discloses the addition of ethylene sulfite in an amount of 2-
20 vol% to an electrolyte system which may include several distinct organic
solvents, increases conductivity and improves protective film formation on the
Appeal 2012-009354
Application 11/927,102

5
electrodes. (Id.) The Examiner concludes it would have been obvious to the
ordinary artisan at the time of the invention to add ethylene sulfite in an amount
within Appellants’ claimed range to the JP ‘845/Kerr system to achieve the
aforementioned benefits. (Id. at 10.)
Appellants contend the Examiner failed to establish a prima facie case of
obviousness because the facts and reasons relied on by the Examiner do not
support findings that one of ordinary skill in the art (1) would have been motivated
to apply the teachings of Kerr and Appel and (2) had a reasonable expectation of
success in making the Examiner’s proposed combination. (See generally, App. Br.
9-12.) Appellants also argue that even if a prima facie case of obviousness were
established, the totality of the evidence, taking into account Appellants’ evidence
of unexpected results, weighs in favor of nonobviousness. (See generally, id. at
12-15.)
Turning first to Appellants’ arguments regarding motivation to combine,
Appellants point out Kerr is directed to inhibiting overcharging, while JP ‘845 is
concerned with improving discharge capacity retention. (Id. at 11-12.) Appellants
argue the Examiner has not explained “why one of ordinary skill in the art at the
time of the [] invention would have had a reason to use a nitrile compound . . . to
improve the method of JP ‘855 [sic, ‘845] for improving discharge capacity
retention.” (Id. at 11.) Likewise, Appellants argue Appel is concerned with
improving safety, not discharge retention capacity. (Id. at 11-12.)
Appellants’ arguments are not persuasive because they fail to explain why
the Examiner erred in finding the ordinary artisan would have been motivated to
add a nitrile compound and a sulfite compound to the JP ‘845 battery in order to
inhibit overcharging and improve safety of the battery as taught by Kerr and
Appel, respectively. In other words, the mere fact that JP ‘845 may not be
Appeal 2012-009354
Application 11/927,102

6
concerned with overcharge protection and improved safety does not mean the
ordinary artisan would not have been motivated to modify JP ‘845 to include these
features. The test for obviousness is what the collective teachings of the prior art
would have suggested to one of ordinary skill in the art. In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991). Further, “motivation to modify a prior art reference to
arrive at the claimed invention need not be the same motivation that the patentee
had.” Alcon Research, Ltd. v Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012)
(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406, 420 (2007) (stating that it
is error to look “only to the problem the patentee was trying to solve”)).
We are also not persuaded by Appellants’ argument that the Examiner did
not demonstrate why one of ordinary skill in the art would have necessarily
combined 0.01 to 3 wt.% of a nitrile compound and 0.2 to 3 wt.% of a sulfite
compound. (Ans. 12.) Appellants have not provided argument or evidence which
refutes the Examiner’s findings that Kerr and Appel disclose or suggest the
addition of a nitrile compound and a sulfite compound, respectively, to a battery in
amounts which overlap the claimed ranges. A prima facie case of obviousness
exists where the prior art and claimed ranges overlap, as well as in those cases
where the claimed range and the prior art range, though not overlapping, are
sufficiently close that one skilled in the art would have expected them to have the
same properties. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003);
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985). “[T]he existence of overlapping or encompassing ranges shifts
the burden to the applicant to show that his invention would not have been
obvious.” In re Peterson, 315 F.3d at 1330.
Appeal 2012-009354
Application 11/927,102

7
As discussed in further detail below, Appellants’ evidence of unexpected
results is not persuasive of nonobviousness. Moreover, Appellants’ own
Specification indicates a lack of criticality in the claimed ranges. (See Spec. 5:24-
32 (“When the electrolytic solution contains a nitrile compound and an S=O group-
containing compound in combination, the nitrile compound is preferably contained
in the electrolytic solution in an amount of 0.001 to 10 wt.%, more preferably 0.01
to 5 wt.%, more preferably 0.01 to 3 wt.%, most preferably 0.01 to 2 wt.%. The
S=O group-containing compound is preferably contained in an amount of 4 wt.%
or less, more preferably in the range of 0.2 to 3 wt. %.”).)
Appellants argue the ordinary artisan would not have had a reasonable
expectation of success in using the 0.01 to about 1 wt% glutaronitrile taught by
Kerr in the JP ‘845 battery because JP ‘845 requires a relatively large amount of
glutaronitrile to achieve the desired result of improved battery discharge capacity
retention. (App. Br. 10.) While JP ‘845 discloses two examples in which the
solvent includes nitrile compounds in amounts ranging from 14.1% to 17.7% (Ans.
6 (discussing Kerr Examples 5 and 6)), Appellants have not directed us to, nor do
we find, any disclosure in JP ‘845 which indicates a nitrile compound must be
present in the amounts used in the Examples. To the contrary, JP ‘845 does not
even require a nitrile compound as one of the solvent components. (See JP [0015]
supra p. 3.) In other words, we agree with the Examiner’s finding that one of
ordinary skill in the art would have understood from JP ‘845 that some amount of
glutaronitrile could be successfully included in the solvent system (see Ans. 5
(“JP’845 clearly discloses that all of the solvents can be used alone or in
combination, that is, . . . JP ‘845 at once envisage the combined use of the
aforementioned electrolyte solvents.”)) and, therefore, would have had a
reasonable expectation of success in adding 0.01 to about 1 wt% glutaronitrile
Appeal 2012-009354
Application 11/927,102

8
along with a redox shuttle additive to the JP ‘845 solvent system comprising one or
more of a “cyclic carbonate, cyclic ester, chain ester, cyclic ether, [and] chain
ether” (see JP ‘845 [0015] and [0026], supra p. 3) to provide the benefit of
improved overcharge protection as taught by Kerr.
Appellants also argue that even if a prima facie case of obviousness were
established, the totality of the evidence, taking into account Appellants’ evidence
of unexpected results, weighs in favor of nonobviousness.
We agree with the Examiner’s assessment of Appellants’ evidence of
unexpected results as not commensurate in scope with the claims and, therefore,
not persuasive of nonobviousness. (See Ans. 23-24.10) We add the following
additional observations.
Appellants’ own Specification fails to indicate any criticality in the claimed
ranges for the nitrile and sulfite compounds, or provide evidence that the
combination of the two compounds provides unexpected results. The Specification
discloses “[t]he dinitrile compound can be used not in combination with the S=O
group-containing compound, under the condition that the dinitrile compound
should be contained in the electrolytic solution in such a small amount as 0.001 to
10 wt.%” (Spec. 5:1-5 (emphasis added)). “If an S=O group-containing compound
is incorporated in the electrolytic solution in combination with a dinitrile
compound, the effect to reduce the erosion of a metallic inner surface of a battery

10 We note the Examiner indicates the 4/18/11 Declaration under 37 C.F.R. § 1.132
has been fully considered (id. at 23). Likewise, we have considered the
experimental data from the Declaration which is reproduced on page 13 of the
Appeal Brief. However, Appellants are directed to 37 C.F.R. § 41.37(c)(1)(ix),
which explicitly states that “[t]he brief shall contain . . . [a]n appendix containing
copies of any evidence . . . entered by the examiner and relied upon by appellant in
the appeal.” A copy of the Declaration was not included with Appellants’ Appeal
Brief, and the Evidence Appendix states “None” (App. Br. 19).
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Application 11/927,102

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case becomes more prominent.” (Spec. 5:9-13 (emphasis added).) Specification
Table 1 shows that batteries which did not contain a sulfite compound, but up to
1% adiponitrile or 0.2% glutaronitrile, exhibited improved discharge capacity
retention as compared to batteries containing 13% adiponitrile or 19%
glutaronitrile. Specification Table 4 shows that batteries containing 2%
adiponitrile and either 2% ethylene sulfite or 0.5% propargyl methane-sulfonate
exhibited improved discharge capacity retention as compared to batteries
containing 2% ethylene sulfite alone. However, the examples do not provide
convincing evidence that a battery using a combination of a nitrile compound and a
sulfite compound has an unexpected, improved discharge capacity as compared to
a battery using a nitrile compound alone. For example, Example C-7 (Spec. 27,
Table 4) shows the discharge capacity retention of a battery containing 2%
adiponitrile and 0.5% propargyl methane-sulfonate was 89.3%, while in Example
A-5, discharge capacity of a battery containing 0.2% adiponitrile alone was 89.2%.
There are no examples showing the discharge capacity retention of a battery
containing 2% Adiponitrile alone or a battery containing 0.2% Adiponitrile and
0.5% propargyl methane-sulfonate whereby a direct comparison of discharge
capacities of batteries containing a nitrile compound alone and a combination of
nitrile and sulfite-containing compounds can be made. However, it does not
appear to us, nor is there evidence, that 89.3% is an improvement over 89.2%.
For the above-stated reasons, we find a preponderance of the evidence,
taking into account Appellants’ evidence of unexpected results, weighs in favor of
the Examiner’s conclusion that claims 1-11 are obvious over JP ‘845 in view of
Kerr and Appel.
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).
Appeal 2012-009354
Application 11/927,102

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AFFIRMED

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