Ex Parte Che et al

Board of Patent Appeals and Interferences

Mar 21, 2005

10091502 (B.P.A.I. Mar. 21, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YONG CHE,
TAKESHI MORINOTO
and
MANABU TSUSHIMA
______________

Appeal No. 2005-0178
Application 10/091,502
______________

HEARD: FEBRUARY 9, 2005
_______________

Before WALTZ, JEFFREY T. SMITH, and PAWLIKOWSKI, Administrative
Patent Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal, under 35 U.S.C. § 134, from
the examiner’s final rejection of claims 1-16.
Claims 1 and 11 are representative of the subject matter on
appeal, and are set forth below:

1. A secondary power source, which comprises:

a positive electrode consisting essentially of activated
carbon, from 0.1 to 20% by weight of a conductive material, and 1
to 20% by weight of a binder based on the total mass of the
positive electrode,

a negative electrode consisting essentially of a carbon
material capable of doping and undoping lithium ions and 4 to 30%
by weight of a binder based on the total mass of the negative
electrode, and

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an organic electrolyte containing a lithium salt,

wherein the negative electrode has a density of from 0.6 to
1.2 g/cm3.

11. A secondary power source, which comprises a positive
electrode containing activated carbon, a negative electrode
containing a carbon material capable of doping and undoping
lithium ions, and an organic electrolyte containing a lithium
salt, wherein the negative electrode has a density of from 0.7 to
1.0 g/cm3.

The examiner relies upon the following references as
evidence of unpatentability:

Kuruma (Japanese Patent)1 JP 2000-090972 Mar. 31, 2000
Nishimura 6,103,373 Aug. 15, 2000
Tsushima et al. (Tsushima ‘292) 6,294,292 Sept. 25, 2001
Honbo et al. (Honbo) 6,399,251 June 4, 2002
Tsushima (Tsushima ‘846) 6,558,846 May 6, 2003

The examiner has entered the following rejections:

I. Claims 1, 2, 5-8, 11, 12, 15 and 16 stand rejected under 35
U.S.C. § 103 as being obvious over Kuruma in view of Honbo.

II. Claims 3, 4, 9, 10, 13, and 14 stand rejected under 35
U.S.C. § 103 as being obvious over Kuruma in view of Honbo,
and further in view of Nishimura.

III. Claims 11 and 12 stand rejected under the judicially created
doctrine of obviousness-type patenting as being unpatentable
over claims 1, 3, 7 and 15 of U.S. Patent 6,294,292 in view

1 We rely upon, and cite from, a computer translation of this document
into English, previously made of record.
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of Honbo.

IV. Claims 11 and 12 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1, 3, 5, 7, and 8 of U.S. Patent
No. 6,558,846 in view of Honbo.

We have carefully considered appellants’ brief and reply
brief2, and the examiner’s answer. This review has led us to
conclude that the examiner’s rejections are not well-founded.

OPINION
I. The 35 U.S.C. § 103 rejection over Kuruma in view of Honbo,
and each of the judicially created doctrine of obviousness-
type patenting rejections3

On page 5 of the answer, the examiner recognizes that
Kuruma4 does not disclose the specific negative electrode density
as claimed in appellants’ claim 1. The examiner relies upon
Honbo for teaching a negative electrode density that falls within
the range claimed by appellants.
Appellants’ position with regard to this rejection is set
forth on pages 3-12 of the brief (appellants reiterate certain
points made, in the reply brief). On page 6 of the brief,
appellants argue that Honbo is directed to a complex oxide
containing Li and Mn, which has a spinel type crystalline
structure, and refer to column 2, lines 38-40 of Honbo.

2 We have reviewed all of the reply briefs of record. Any referral to
the reply brief in this decision is a reference to the reply brief
filed on July 26, 2004.
3 These 3 rejections involve the same issue (whether Honbo is properly
combinable with each of the primary references in each respective
rejection).
4 The examiner also recognizes that each of the Tsushima patents does
not disclose the claimed negative electrode density. Answer, pages 10
and 12.
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Appellants argue that Honbo discloses that the density range of
0.95 to 1.5 g/cm3 of the negative electrode material prevents the
precipitation of Mn on and inside the negative electrode, and
refer to column 4, lines 5-17.
Appellants also state that Honbo discloses that the density
range of the negative electrode material should be selected to
minimize a failure mode which is specific to the Li/Mn oxide
composition of the positive electrode material of Honbo. Brief,
page 6.
Appellants argue that their claimed secondary power source
has a completely different kind of positive electrode material
(i.e., activated carbon) which cannot fail in the manner
described in Honbo. Appellants conclude that the specific
failure mode described in Honbo is not possible in their claimed
secondary power source or, for that matter, in the secondary
power sources described in Kuruma or in the claims of each of the
Tsushima patents. Brief, page 7.
Appellants argue that one of ordinary skill in the art of
preparing secondary power sources would not have reasonably
considered the disclosure of Honbo to apply to the secondary
power source described in Kuruma or in the claims of the Tsushima
patents, in which the positive material comprises activated
carbon. Brief, page 7.
Accordingly, appellants state that Honbo does not reasonably
suggest combining an activated carbon positive electrode with a
carbon material negative electrode having a density in the
claimed range. Brief, page 7.
On page 15 of the answer, the examiner rebuts and states
that Honbo teaches a negative electrode active material,
characterized in containing carbon, and having a density in the
range larger than .9 g/cm and smaller than 1.5 g/cm, and the
examiner concludes that Honbo’s teaching clearly encompasses the
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use of a negative electrode material made of carbon, and having
the claimed density range, regardless of the battery chemistry
per se.
We agree with appellants’ position for the following
reasons.
The examiner’s position fails to appreciate that before an
examiner may combine the disclosures of two or more prior art
references in order to establish prima facie obviousness, there
must be some suggestion for doing so, found either in the
references themselves or in the knowledge generally available to
one of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). In the instant
case, as pointed out by appellants, because of the differences
between the secondary power source in Honbo and that of Kuruma or
the Tsushima patents, there is no motivation to modify the
density of the negative electrode material of Kuruma or the
Tsushima patents such that the density is as taught in Honbo.
Of course, it is clear that Honbo teaches a negative
electrode containing emulsive carbon as having a negative
electrode density in the range as set forth in column 3, lines
57-61. However, the test for obviousness is what the combined
teachings of the prior art references would have suggested to
those of ordinary skill in the art. In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). The examiner’s
position fails to explain a suggestion, by the references
themselves, or in the knowledge generally available to one of
ordinary skill in the art, for modifying the density of the
negative electrode material of Kuruma or of the claims of the
Tsushima patents, so as to have the density value as taught by
Honbo.
While we observe, on page 16 of the answer, that the
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examiner states that there is suggestion to combine the
references because the applied references are found within the
same field of endeavor and pertinent to each other because of the
battery environment disclosed in the references, this is not the
standard of a prima facie case of obviousness. In re Fine,
supra.
Also, on page 17 of the answer, the examiner shifts the
burden to appellants to show why Honbo’s negative electrode
density cannot function in a substantially similar battery
environment. This is an incorrect position taken by the
examiner. As pointed out by appellants in their reply brief, on
page 2, the burden is on the examiner to present a prima facie
case of obviousness. For the reasons discussed above, the
examiner has failed to do so.
We also note that on page 10 of the brief, appellants
discuss the examiner’s position regarding the negative electrode
density being a result effective variable. Appellants refer to
In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 9 (CCPA 1977).
This case stands for the proposition that there are exceptions to
the general rule that optimization of a result effective variable
is obvious. One exception is that the variable was not
recognized to be result effective.
At the top of page 11 of the brief, appellants argue that
the applied art discloses no range for a negative electrode
density when used with a secondary power source of the type
claimed by appellants, and of the type disclosed in Kuruma and of
the type recited in the claims of the Tsushima patents.
On page 17 of the answer, the examiner actually agrees with
appellants that the applied art fails to recognize that the
negative electrode density is a result effective variable.
Answer, page 18. The examiner, however, then concludes that the
negative electrode density does not impart criticality to the
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secondary power source, and hence is not supportive of a
patentable subject matter. In so doing, the examiner overlooks
the above-mentioned case law.
Because it is not disputed by the examiner that the applied
art fails to recognize that the negative electrode density is a
result effective variable, it follows, according to In re
Antonie, that appellants’ claimed subject matter is unobvious.
Id.
In view of the above, we determine the examiner has not set
forth a prima facie case of obviousness. As such, we need not
discuss any evidence in connection with unexpected results.
We therefore reverse the rejection under 35 U.S.C. § 103 as
being obvious over Kuruma in view of Honbo.
We also reverse each of the rejections under the judicially
created doctrine of obviousness-type double patenting for the
same reasons that we reverse the rejection under 35 U.S.C. § 103
as being obvious over Kuruma in view of Honbo. As indicated,
supra, each of the primary references applied in the rejections
under the judicially created doctrine of obviousness-type double
patenting did not teach appellants’ claimed negative electrode
density, and Honbo is not properly combinable with each of these
primary references for the same reasons that Honbo is not
properly combinable with Kuruma.
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II. The Other Rejection
The other rejection before us in this appeal (the rejection
of claims 3, 4, 9, 10, 13, and 14 under 35 U.S.C. § 103 as being
obvious over Kuruma in view of Honbo, and further in view of
Nishimura), is also reversed because Nishimura does not cure the
aforementioned deficiencies of Kuruma in view of Honbo.
Hence, for the same reasons, discussed supra, we reverse the
rejection of claims 3, 4, 9, 10, 13, and 14 under 35 U.S.C. § 103
as being obvious over Kuruma in view of Honbo, and further in
view of Nishimura.

III. Conclusion
Each of the rejections is reversed.

REVERSED

Thomas A. Waltz )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jeffrey T. Smith ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

BAP/cam
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