Ex Parte an et al

Patent Trial and Appeal Board

Sep 19, 2016

13597214 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/597,214 08/28/2012
23363 7590 09/21/2016
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Jung-Woo An
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.
70012/S744 3201
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
pto@lrrc.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG-WOO AN, KYEU-YOON SHEEM, and
SUMIHITO ISHIDA1
Appeal2015-003314
Application 13/597,214
Technology Center 1700
Before CATHERINE Q. TIMM, A VEL YN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as Samsung SDI Co., Ltd.
Appeal Br. 1.
2 In our opinion below, we reference the Specification filed August 28, 2012
(Spec.), Final Office Action mailed April 30, 2014 (Final), the Advisory
Action mailed July 7, 2014, the Appeal Brief filed September 11, 2014
(Appeal Br.), the Examiner's Answer mailed October 27, 2014 (Ans.), and
the Reply Brief filed December 9, 2014 (Reply Br.).
Appeal2015-003314
Application 13/597,214
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1-15 under 35 U.S.C. § 103(a) as obvious over Ishida3. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a positive electrode for a rechargeable
lithium battery (see, e.g., claim 1 ), and a rechargeable lithium battery
including the positive electrode (see, e.g., claim 8). The electrode includes a
positive active material and an activated carbon. The claims require that the
average diameter of the activated carbon be larger than the average diameter
of the positive active material in a recited range. Claim 1 is illustrative:
1. A positive electrode for a rechargeable lithium battery,
compnsmg:
a positive active material; and
activated carbon having an average particle diameter
larger than an average particle diameter of the positive active
material and in a range of about 103% to about 160% relative to
100% of the average particle diameter of the positive active
material.
Appeal Br. 15.
Appellants do not argue any claim apart from the others. We select
claim 1 as representative for resolving the issues on appeal. See 37 C.F.R. §
41.37 (c)(l)(iv)(2014).
3 Ishida et al., JP 2004-103546, published Feb. 2, 2004, as translated.
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Application 13/597,214
OPINION
There is no dispute that Ishida teaches a rechargeable lithium battery
comprising a positive active material and activated carbon or that Ishida
specifies using activated carbon of mean particle diameter of 1-3 0 microns.
Compare Final 3 with Appeal Br. 4--11; Reply Br. 1-5.
There is some dispute over the range of particle diameters Ishida
specifies for the positive active material. Compare Final 3; Advisory Action
2 with Appeal Br. 9; Reply Br. 4. Ishida discloses an average primary
particle diameter usually measured by SEM observation, but also discloses a
second average particle diameter (mean particle diameter) measured with a
laser diffraction/scatter type particle size distribution device. Ishida i-fi-f 11-
12. The working example reports only the second average particle diameter
for the positive active material (lithium nickel series composite oxide).
Ishida i150. Appellants contend that Ishida teaches primary particles that are
different from secondary particles, and it is the secondary particles that are
combined with the activated carbon. Appeal Br. 9. But Ishida does not refer
to primary and secondary particles, Ishida refers to primary and secondary
diameters, measured by different methods. Ishida i-fi-f 11-12. It is possible
that Ishida' s primary diameter is referring to the diameter of source
compounds in the slurry used to form the lithium nickel series composite
oxide (positive active material), and the secondary diameter is the diameter
of the powder produced, i.e., the end product positive active material, but
this is far from clear. Compare Ishida i-fi-f 15, 25 with i-fi-f 11, 12, 50.
Given that the working example reports the second average particle
diameter for the positive active material used in the example, Ishida i1 50, it
is at least clear that Ishida teaches combining a positive active material of
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Appeal2015-003314
Application 13/597,214
second average particle diameter with activated carbon. Reading the
machine translation as best we can, we find that Ishida discloses using a
positive active material of second average particle diameter of 1-50 microns,
preferably between 4 and either 30 or 40 microns. Ishida i-f 12.
The Examiner determines that "[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to optimize the particle
size distribution of the positive active material in order to achieve the
desired properties." Final 4. Appellants do not directly challenge that
determination, but instead argue that Ishida fails to teach the claimed ratio of
activated carbon average particle diameter to positive active material
average particle diameter, fails to teach that the ratio is a result effective
variable, fails to provide guidance for arriving at the claimed ratio, and
discloses examples in which the diameters are outside the claimed range.
Appeal Br. 4--11.
Appellants' arguments do not persuade us of reversible error in the
rejection because Ishida is, like Appellants, directed to forming a lithium
secondary battery with high battery output, capability, and cycle-life.
Compare Ishida i-fi-15---6, 64 with Spec. i-fi-1 4, 12. When finding the workable
or optimal activated carbon diameter and positive active material diameter,
which there can be no dispute are taught as result effective variables by
Ishida, one of ordinary skill in the art would have arrived at the claimed
103%-160% range given the similarity in results desired. The ratio of
diameters is directly related to the diameters themselves. The ratio itself
need not be a result effective variable in order for the teaching of Ishida to
render the electrode of the claim prima facie obvious. That Ishida discloses
examples outside the claimed range of diameter ratios does not negate the
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Appeal2015-003314
Application 13/597,214
broader teachings of the reference. See KSR Int'!. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (Pursuing known options within the ordinarily skilled
artisan's grasp "is likely the product not of innovation but of ordinary skill
and common sense."); see also In re Aller, 220 F .2d 454, 456 (CCP A 1955)
(where the prior art discloses the general conditions of what is claimed, it
follows that discovering the optimum or workable ranges by routine
experimentation is within the ordinary artisan's grasp, which can support a
conclusion of obviousness such that it falls on the applicant to show that the
change in condition they are claiming produces an unexpected result).
Turning to the showing of unexpected results, the Examiner finds that
the showing is not commensurate in scope with the breadth of the claim
because the showing is limited to a specific positive active material in a
specific concentration (85 wt% LiCo02), whereas the claim is not so limited
(the claim encompassing all positive active materials in all concentrations).
Ans. 8. Appellants do not address this finding. Reply Br. 5-8. In order to
support a showing of unexpected results Appellants must provide an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner. In re Huai-Hung Kao, 639
F.3d 1057, 1068 (Fed. Cir. 2011). Appellants have not provide sufficient
evidence that other positive active materials in other concentrations behave
in the same manner as the tested compositions.
After reviewing the totality of the evidence, we determine a
preponderance of the evidence supports the Examiner's conclusion of
obviousness.
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Application 13/597,214
CONCLUSION
We sustain the Examiner's rejection.
DECISION
The Examiner's decision is affirmed.
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)(l).
AFFIRMED
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