Ex Parte Adachi et al

Board of Patent Appeals and Interferences

Aug 23, 2010

10616716 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MOMOE ADACHI
and SHIGERU FUJITA
__________

Appeal 2009-006748
Application 10/616,716
Technology Center 1700
___________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

HANLON, 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 2009-006748
Application 10/616,716

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1-5 and 7-19, all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a battery. Claim 1,
reproduced below, is illustrative.
1. A battery comprising a cathode, an anode, and an
electrolyte, wherein,

(a) the capacity of the anode includes both of a
capacity component obtained by insertion and extraction of a
light metal and a capacity component obtained by deposition
and dissolution of the light metal,

(b) the electrolyte contains a light metal salt having a
M-O bond wherein M represents any of boron (B), phosphorus
(P), aluminum (Al), gallium (Ga), indium (In), thallium (Tl),
arsenic (As), antimony (Sb) or bismuth (Bi),

(c) the light metal is deposited on the anode at an open
circuit voltage lower than overcharge voltage,

(d) a ratio X/Y is at least 0.05 to at most 3.0, X being
the capacity component obtained by deposition and dissolution
of the light metal and Y being the capacity component obtained
by insertion and extraction of the light metal, and

(e) the capacity of the anode obtained by insertion and
extraction of the light metal is smaller than the capacity of the
cathode.

Br., Claims Appendix.2

2 Appeal Brief dated September 9, 2008.
2
Appeal 2009-006748
Application 10/616,716

The following Examiner’s rejections are before us on appeal:
(1) Claims 1-5, 7-11, 13-16, 18, and 19 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kawakami (US 6,949,312, issued
September 27, 2005) in view of Fujita (WO 01/22519, published March 29,
2001)3 and Iwamoto (WO 00/33403, published June 8, 2000).4
(2) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kawakami in view of Fujita and Iwamoto and further in view of
Morigaki (US 2002/0061448, published May 23, 2002).
(3) Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kawakami in view of Fujita and Iwamoto and further in view of
Yoshioka (US 2001/0005558, published June 28, 2001).
B. ISSUE
As for claim 1, the Appellants do not dispute the Examiner’s factual
findings as to Kawakami, Fujita, and Iwamoto. Rather, the Appellants
contend that there is no suggestion to combine Fujita and Kawakami in the
manner proposed by the Examiner. Br. 8. The Appellants do not present
separate arguments for any of dependent claims 2-5 and 7-19.
Therefore, the sole issue on appeal is:

3 The Examiner relies on US 6,884,546 to Fujita issued April 26, 2005, as an
English translation of the WO 01/22519 publication. See Final Office
Action dated December 28, 2007 (“Final”), at 2. The Appellants do not
oppose. Therefore, we will refer to the disclosure of US 6,884,546 in this
opinion as evidence of the disclosure of the WO 01/22519 publication.
4 The Examiner relies on US 6,824,920 to Iwamoto issued November 30,
2004, as an English translation of the WO 00/33403 publication. See Final
2. The Appellants do not oppose. Therefore, the disclosure of US 6,824,920
has been relied on as evidence of the disclosure of the WO 00/33403
publication.

3
Appeal 2009-006748
Application 10/616,716

Did the Examiner err in concluding that the battery recited in claim 1
would have been obvious to one of ordinary skill in the art in view of the
combined teachings of the applied prior art?
For reasons set forth in the Examiner’s Answer dated December 2,
2008 (“Ans.”), we answer this question in the negative. We add the
following for emphasis.
C. DISCUSSION
Kawakami discloses a rechargeable lithium battery that has a
prolonged charging and discharging cycle life and has a high capacity and a
high energy density. Kawakami 5:59-62. The Examiner found, and the
Appellants do not dispute, that the battery disclosed in Kawakami has an
anode capacity that is based on insertion and extraction of a light metal.
Ans. 7; Br. 7. There is also no dispute that the cathode capacity of the
battery disclosed in Kawakami is made to be larger than the anode capacity
(item (e) in claim 1). Ans. 3; Br. 8; Kawakami 29:52-54.
The Examiner found that Kawakami does not disclose (1) an anode
capacity obtained by both insertion and extraction and deposition and
dissolution of a light metal (item (a) in claim 1), (2) a light metal deposited
on the anode at an open circuit voltage lower than overcharge voltage (item
(c) in claim 1), and (3) a ratio X/Y of at least 0.05 to 3.0 (item (d) in claim
1). Nonetheless, the Examiner found, and the Appellants do not dispute, that
Fujita discloses a rechargeable battery comprising these features. Ans. 4;
Br. 8.
The Examiner concluded that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify
Kawakami’s battery with the teachings of Fujita for the benefit of improving
4
Appeal 2009-006748
Application 10/616,716

the overall performance of the battery by depositing lithium after charging.”
Ans. 4.
The Appellants generally argue that “the Examiner has used
impermissible hindsight to combine the cited art to arrive at Appellant’s
claimed invention.” Br. 8. Moreover, the Appellants contend that “one
having skill in the art would not have received a suggestion from Kawakima
[sic, Kawakami] to include an [sic, a] cathode capacity that is larger than an
anode capacity in Fujita’s device.” Br. 8.
The Appellants’ arguments are not persuasive of reversible error.
First, the rejection on appeal is based on Kawakami in view of Fujita not
Fujita in view of Kawakami as urged by the Appellants.5 In other words, the
Examiner is modifying the battery of Kawakami to include the various
features disclosed in Fujita for the purpose of “improv[ing] the battery by
achieving a high energy density and excellent cycle characteristic.” Ans. 7-
8.
Second, the Examiner’s conclusion of obviousness is not based on
impermissible hindsight. Fujita discloses that deposition on an anode at an
open circuit voltage lower than the overcharge voltage and an X/Y ratio as
recited in claim 1 results in a high energy density and an improved cycle
characteristic. See, e.g., Fujita 13:1-30, 17:65-18:30, 19:37-45. Thus, on
this record, it is reasonable to conclude that one of ordinary skill in the art
would have seen a benefit in using these features to improve the

5 For completeness, we note that the Examiner’s rejection of claim 1 is based
on Kawakami in view of Fujita and Iwamoto. The Appellants do not dispute
the Examiner’s factual findings or conclusions of law as to Iwamoto.
Therefore, it is not necessary to include Iwamoto in our discussion here.
5
Appeal 2009-006748
Application 10/616,716

rechargeable battery of Kawakami. The Appellants do not direct us to any
evidence to the contrary.
As a final point, we note that the Appellants do not direct us to any
evidence of secondary considerations of non-obviousness, such as
unexpected results.
D. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

tc
SONNENSCHEIN NATH & ROSENTHAL LLP
P.O. BOX 061080
WACKER DRIVE STATION, WILLIS TOWER
CHICAGO, IL 60606-1080

6