Ex Parte Fukunaga et al

Patent Trial and Appeal Board

Feb 28, 2017

13219167 (P.T.A.B. Feb. 28, 2017)

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.
13/219,167 08/26/2011 Atsushi FUKUNAGA 070456-0333 9294
20277 7590 03/02/2017
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
ipdocketmwe @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUSHI FUKUNAGA, SHINJIINAZAWA,
MASATOSHI MAJIMA, KOJINITTA, SHOICHIRO SAKAI,
RIKA HAGIWARA, TOSHIYUKINOHIRA, and
TATSUYAISHIBASHI
Appeal 2016-001901
Application 13/219,1671
Technology Center 1700
Before TERRY J. OWENS, JULIA HEANEY, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—8, and 10. We have jurisdiction. 35 U.S.C.
§ 6(b). We AFFIRM.
1 According to the Appellants, the real party in interest is Sumitomo Electric
Industries, Ltd. and Kyoto University. Appeal Br. 1.
Appeal 2016-001901
Application 13/219,167
STATEMENT OF THE CASE
Appellants describe the invention as relating to a sodium battery that
achieves high safety and high energy density and is operable at low
temperature. Spec. 2:15—18. Claim 1, reproduced below with emphasis
added to certain key recitations and some spacing added for readability, is
illustrative of the claimed subject matter:
1. A battery, comprising:
a positive electrode;
a negative electrode mainly composed of sodium; and
an electrolyte provided between said positive electrode
and said negative electrode,
said electrolyte being molten salt containing anions
expressed with chemical formula (I) below and
cations of metal,
R1 and R2 in said chemical formula (I)
independently representing fluorine atom or
fluoroalkyl group, and
said cations of metal containing at least one of at
least one of cations of alkali metal and at least one
of cations of alkaline-earth metal,
wherein said positive electrode contains a metal
compound being NaCrCh.
2
Appeal 2016-001901
Application 13/219,167
Appeal Br.2 19 (Claims App’x).
REJECTION AND REFERENCES
On appeal, the Examiner maintains a rejection of claims 1, 3—8, and
10 under 35 U.S.C. § 103 as unpatentable over Hagiwara et al., JP 2009-
067644 A, published April 2, 2009 (hereinafter “Goto”3) in view of Barker
et al., US 2007/0072034 Al, published Mar. 29, 2007(hereinafter “Barker”).
Ans. 2.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ contentions,
we are not persuaded that Appellants identify reversible error. Thus, we
2 In this decision, we refer to the Final Office Action mailed October 23,
2014 (“Final Act.”), the Appeal Brief filed March 23, 2015 (“Appeal Br.”),
the Examiner’s Answer mailed September 25, 2015 (“Ans.”), and the Reply
Brief filed November 25, 2015 (“Reply Br.”).
3 The Examiner refers to Hagiwara by the surname of the second named
inventor, “Goto.” Ans. 2. For consistency and ease of cross-reference, we
do the same.
3
Appeal 2016-001901
Application 13/219,167
affirm the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellants do not separately argue claims 3—8 or 10. We therefore
limit our discussion to claim 1. Claims 3—8 and 10 stand or fall with that
claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Goto teaches a sodium battery containing
bisfluorosulfonyl imide as an anion and an alkali metal as a cation and
including an electrolyte comprising a molten salt with anions that can be
expressed as claim l’s recited (I) wherein M may be Li, Na, K, Rb, or Cs.
Ans. 2 (providing citations to Goto). The Examiner finds that Goto does not
teach the composition of the positive electrode but finds that Barker teaches
a positive electrode composed of NaCrCE. Ans. 3 (providing citations to
Barker). The Examiner concludes that it would have been obvious to choose
NaCrCE (along with a conductive additive and binder) as the positive
electrode in the battery of Goto with the reasonable expectation of providing
the benefits recited in Goto such as “increased capacity, enhanced cycling
capability, enhanced reversibility, enhanced ionic conductivity, enhanced
rate capability, and reduced costs.” Id. A preponderance of the evidence
supports the Examiner’s findings and conclusion.
Appellants argue that the Examiner has not articulated a proper reason
to combine Goto and Barker because the advantages of Barker result from a
number of parameters and not just positive electrode material. Appeal Br.
6—7. Appellants further argue that the benefits of Barker result “in
conjunction with a lithium-based electrolyte” and not “a broad range of
electrolytes.” Reply Br. 5. Barker, Goto, and the instant Application,
however, all teach lithium-based electrolytes. See id. at 5 (explaining that
4
Appeal 2016-001901
Application 13/219,167
Barker “is directed to a . . . cell in conjunction with a lithium-based
electrolyte”); Ans. 2 (explaining that M of Goto’s electrolyte “may be Li,
Na, K, Rb, or Cs”); Appeal Br. 19 (claim 1 recites an electrolyte containing
cations of “alkali metal” which could be lithium); Spec. 7:3—18 (explaining
that lithium may be used as the alkali metal). The weight of the evidence
supports that a person of ordinary skill would have turned to Barker to select
material for Goto’s positive electrode because Barker, like Goto, involves a
lithium-based electrolyte. Ans. 3; Barker | 5.
Moreover, Barker teaches that non-lithium material (such as the
NaCrCL recited by claim 1 and taught by Barker) can beneficially be
employed as the alkali metal of an electrode when a lithium-based
electrolyte is utilized. Barker || 4—5. Thus, a person of ordinary skill would
have expected a Goto battery employing NaCrCE to have the benefits taught
by Barker. Use of NaCrCE in the positive electrode of Goto’s battery would
be no more than the predictable use of prior art elements according to
established functions. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). We therefore discern no error in the Examiner’s combination of
Barker’s NaCrCL with Goto’s battery.
Appellants also argue that Barker teaches over 600 positive electrode
materials and provides no suggestion that selecting NaCrCE would “yield a
predictable solution with a reasonable expectation of success.” Appeal Br.
7—8; Reply Br. 5—6. Barker, however, indicates that NaCrCE is among a
much smaller number of preferred materials for the positive electrode.
Barker first teaches a broad general formula, formula (I), for the positive
electrode active material. Barker 143. Barker then teaches six different sub
formulas, formula (II) through formula (VII), that describe more specific
5
Appeal 2016-001901
Application 13/219,167
materials within the scope of formula (I) that can be used for the positive
electrode active material. Id. at|| 94, 108, 114, 117, 125, and 133. Sub
formula (IV) is a sub formula of both general formula (I) and sub formula
(III). Id. at 1114. Importantly, of all formulas identified by Barker, only
sub formula (IV) is preferred. Id. (referring to “[a] preferred electrode active
material of the present subembodiment”); 1108 (referring to formula (III) as
a subembodiment). Barker identifies NaCr02 as one of only about forty
specifically identified possibilities satisfying all of formulas (I), formula
(III), and preferred formula (IV). Id. at 1116.
Thus, a preponderance of the evidence supports the Examiner’s
finding that Barker “list[s] a sufficiently limited number of explicitly defined
positive extrude materials, including the explicit disclosure ofNaCrCFin
paragraph 0116.” Ans. 5. Given the fairly limited number of preferred
active materials specifically identified by Barker, a person of skill would
have reasonably considered NaCrCV All embodiments of the Barker
reference, including nonpreferred embodiments, must be considered. Ans.
4—5; see also see In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all
disclosures of the prior art, including unpreferred embodiments, must be
considered”); Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (The fact that a reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
is especially true because the claimed composition is used for the identical
purpose taught by the prior art.”).
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection of claims 1, 3—8, and 10.
6
Appeal 2016-001901
Application 13/219,167
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
3—8, and 10.
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
7