Ex Parte Fukuoka et al

Board of Patent Appeals and Interferences

Jul 12, 2007

10237089 (B.P.A.I. Jul. 12, 2007)

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for publication and is not binding precedent of the Board.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 HIROFUMI FUKUOKA, SATORU MIYAWAKI,
KAZUMA MOMII, MIKIO ARAMATA,
and SUSUMU UENO
____________

Appeal 2007-1118
Application 10/237,089
Technology Center 1700
____________

Decided: July 12, 2007
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

Majority opinion for the Board filed by Administrative Judge Timm.
Concurring opinion filed by Administrative Judge Smith.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2007-1118
Application 10/237,089

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-14 and 16-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
I. BACKGROUND
The invention relates to a conductive silicon oxide powder, a negative
electrode material comprising the powder, and a method of preparing the
powder. The negative electrode is used in a lithium ion secondary battery
cell (Specification 1:7-11). Claims 1, 8, and 9 are illustrative of the subject
matter on appeal:
1. A conductive silicon oxide powder in which particles of silicon
oxide having the general formula: SiOx wherein 1 ≤ × < 1.6 are covered on
their surfaces with a conductive coating by chemical vapor deposition
treatment.

8. A negative electrode material for a non-aqueous electrolyte
secondary cell, comprising a mixture of the conductive silicon oxide powder
of claim 1 and 1 to 60% by weight of a conductive agent, the mixture having
a total carbon content of 25 to 90% by weight.

9. A method for preparing the conductive silicon oxide powder of
claim 1, comprising the step of heat treating particles of silicon oxide having
the general formula: SiOx wherein 1 ≤ × < 1.6 in an atmosphere containing
at least an organic gas or vapor at a temperature of 500 to 1,200°C.

The Examiner relies on the following prior art references to show
unpatentability:
Sakashita (as translated) JP 2001-185125 Jul. 6, 2001
Umeno US 6,383,686 B1 May 7, 2002

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The Examiner rejects claims 1-14 and 16-20 under 35 U.S.C. § 103(a)
as unpatentable over Sakashita in view of Umeno.

II. DISCUSSION
A. Issue
To determine the issues on appeal, we have reviewed the contentions
of the Appellants and the Examiner as presented in the Brief filed June 22,
2006, the Answer filed September 8, 2005, the Reply Brief filed November
4, 2005, the Supplemental Answer filed August 4, 2006, and the
Supplemental Reply Brief filed October 4, 2006.
Appellants’ main contention as presented in their Briefs is that there is
no suggestion in the prior art for combining the SiOx particles of Sakashita
with the chemical vapor deposited carbon coating of Umeno and that their
showing of unexpected results provides sufficient evidence of
nonobviousness. The Examiner finds that the suggestion to combine arises
from the teachings of Umeno. The main issue arising from the contentions
of Appellants and the Examiner is: Have Appellants overcome the rejection
by showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with sufficient evidence of unexpected results? See In
re Kahn, 441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)
(“On appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.” (emphasis
omitted)).

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B. Facts
Sakashita, Umeno, and Appellants’ invention are all directed to an
electrode active material for use in non-aqueous secondary batteries also
known as secondary lithium ion batteries (Sakashita ¶ 1; Umeno ¶ 1;
Specification 1:7-11).
Sakashita describes an electrode active material including SiOx
(x=1.05-1.60) powder mixed with a conductive material of carbon black
powder (Abstract; ¶ 5). The carbon black powder serves as a conduction
agent (Sakashita ¶ 11). The SiOx and carbon black are mixed together in the
form of a slurry (Sakashita ¶ 14).
The SiOx powder of Sakashita is “capable of storing and releasing
lithium ions” or, in other words, “capable of forming a lithium alloy”
(Sakashita, Abstract; ¶ 5; see also Sakashita ¶ 3 and Umeno, col. 3, ll. 1-3;
finding of the Examiner, Answer 7).
We determine that Sakashita’s SiOx (x=1.05-1.60) powder contains a
mixture of silicon (Si) and silicon dioxide (SiO2). This determination is
based on the method of making the SiOx. which is substantially similar to
Appellants’ process of mixing Si and SiO2 at temperatures on the order of
1400 °C (Compare Sakashita ¶ 8 to Specification 4:1-31 and 11:13-21) and
Sakashita’s disclosure that analysis of the SiOx powder by x-ray
photoelectron spectroscopy 750, for example, “ESCA,” gives “a peak which
is different in Si and SiO2” (Sakashita ¶ 9). That both Si and SiO2 are
present is further evinced by the teaching of Sakashita that the SiOx powder
is “capable of storing and releasing lithium ions” (Sakashita, Abstract; ¶ 5).
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It is the Si that is active, SiO2 being inactive electrochemically
(Specification 4:11-16).
Umeno also describes an anode active material for a lithium
secondary battery (Umeno, col. 1, ll. 11-12). Umeno’s anode is said to have
a large capacity, high safety, and excellent charging and discharging cycle
property (Umeno, col. 1, ll. 12-14). Umeno recognized a problem with the
volume of the anode expanding several-fold as lithium alloyed with the
active material (e.g., silicon) within the anode, the expansion resulting in
powderizing which destroys the anode (Umeno, col. 2, ll. 12-39). Umeno
solves the problem of electrode powderization and destruction by covering
the lithium alloy-forming core particles with an expansion inhibiting layer of
carbon (Umeno, col. 2, ll. 48-68). The coating further suppresses oxidation
during charging and discharging of the battery (Umeno, col. 6, ll. 22-24) as
well as improves the conductivity of the particulate core and allows the
lithium to be supplied uniformly to the core from the whole outer surface of
the carbon layer thus improving charging and discharging speeds (Umeno,
col. 6, ll. 26-33). As the material for the core particles, Umeno suggests
selecting “metal and semimetal … capable of forming a lithium alloy” and
discloses a preference for titanium, iron, boron, and silicon with a particular
preference for silicon (Umeno, col. 4, ll. 38-44). Umeno does not expressly
state that SiOx can be used as a particulate core material, although Umeno
notes that silicon oxide is present in silicon as an allowable impurity, it
being inactive electrochemically (Umeno, col. 4, ll. 45-49).
The Fukuoka I Declaration provides data for lithium ion secondary
battery cells constructed and tested as in Appellants’ Example 2 of the
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Specification except that silicon powder was used instead of SiOx powder.
Comparison data for this example and the examples presented in the
Specification is provided in Table 1. The first charge and discharge
capacities of the comparison example are higher than those of Appellants’
Example 2, but the capacity retentivity after 30 cycles is lower (45% versus
98%).
The Fukuoka II Declaration provides data for a lithium ion secondary
battery cell constructed and tested as in Appellants’ Example 2 except that
silicon powder made according to Umeno’s Example 1 was used. Again, the
first charge and discharge capacities of the comparison are higher than those
of Appellants’ Example 2, but the capacity retentivity after 30 cycles is
lower (44%).
C. Analysis
We focus first on the question of whether Appellants have overcome
the rejection by showing that the evidence is insufficient to support the
Examiner’s case of obviousness. Appellants’ contention in this regard is
that there is no suggestion of using the SiOx particles of Sakashita with the
chemical vapor deposited carbon coating of Umeno because Umeno
expressly defines the range of useful core materials as limited to metals and
semimetals, of which SiOx (x=1.05-1.60) is not.
Appellants’ argument is insufficient to rebut the Examiner prima facie
case of obviousness for the following reasons.
First, Appellants do not convincingly address the Examiner’s finding
that Umeno’s suggested materials have the same function as Sakashita’s
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SiOx (x=1.05-1.60), i.e., the material is ultimately selected to alloy with, or
absorb, lithium ions (Answer 7).
Second, there are several bases for one of ordinary skill in the art to
have been led to combine the coating of Umeno with the particles of
Sakashita that arise from benefits taught by Umeno any one of which would
have been sufficient to support the prima facie case of obviousness. Umeno
articulates several benefits to using a carbon coating that one of ordinary
skill in the art would have expected to obtain when the coating were placed
on Sakashita’s SiOx (x=1.05-160) particles including suppression of
expansion during lithium ion alloying, prevention of further oxidation during
charging and discharging, and improvement in conductivity. Umeno’s
disclosure of conductivity improvement provides a strong reason to combine
because Sakashita expressly teaches that conductivity improvement is
desirable as noted in the above findings of fact. Thus, an ordinarily skilled
artisan would have expected that Umeno’s carbon coating would be suitable
as an additive source of conductive carbon or as a substitution of a carbon
source for use in Sakashita’s conductive electrode. Another reason for
making the combination arises from the expected added benefit of
suppressing any expansion that might occur when Sakashita’s SiOx (x=1.05-
160) particles, or the Si particles therein, absorb lithium ions. Umeno
teaches that the expansion inhibiting carbon coating will prevent the
powderization and destruction of the anode and improve cycle properties
(Factual findings above).
With regard to the benefit of suppressing expansion, it is reasonable to
conclude that because the SiOx of Sakashita stores lithium ions, one of
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ordinary skill in the art would have recognized that the anodes of Sakashita
would be subject to the same expansion, powderization, and destruction
Umeno solves by carbon coating (Answer 7). This is especially true because
the SiOx of Sakashita is a mixture of Si and SiO2. One of ordinary skill in
the art would have expected the carbon coating to prevent expansion of the
Si particles of the SiOx material. This reason to combine the teachings of the
references arises from the implicit teachings of the prior art. A teaching,
suggestion, or motivation to combine the relevant prior art teachings does
not have to be found explicitly in the prior art, as the teaching, suggestion, or
motivation may be implicit from the prior art as a whole. In re Kahn, 441
F.3d 977, 987-88, 78 USPQ2d 1329, 1336 cited with approval in KSR Int'l.
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1395-96
(2007). In evaluating the prior art references for a suggestion, it is proper to
take into account not only the specific teachings of the references, but also
any inferences which one skilled in the art would reasonably be expected to
draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
(CCPA 1968).
Umeno indicates that there is an expansion problem when the
electrode includes lithium alloying active material such as Si. Umeno solves
the problem by applying a carbon coating. Sakashita describes an electrode
with lithium alloying active material containing Si. It would have been
obvious to try applying the coating of Umeno on the active material of
Sakashita, the expectation being that the coating would enhance conductivity
and suppress expansion. As stated in KSR Int'l:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
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solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR Int'l. Co. v. Teleflex Inc., 127 S. Ct. 1727 at 1742, 82 USPQ2d at 1397.
In determining that there was a reason to combine the teachings of the
cited references, the Examiner properly took into account the interrelated
teachings of the prior art references, the effects of the demands on those in
the lithium ion secondary battery art to improve cycle retention and charging
speed, and the background knowledge of the ordinary artisan as evidenced
by the references. See KSR Int’l. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41,
82 USPQ2d 1385, 1396 (2007) (“Often, it will be necessary for a court to
look to interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”).
We now turn to the second question of whether Appellants have
overcome the rejection by rebutting the prima facie case with sufficient
evidence of unexpected results.
Once a prima facie case of obviousness is established, the burden of
coming forward with evidence and argument in rebuttal is shifted to
appellants. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). Rebuttal may take the form of “a comparison of test data
showing that the claimed compositions possess unexpectedly improved
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properties ... that the prior art does not have, that the prior art is so deficient
that there is no motivation to make what might otherwise appear to be
obvious changes, or any other argument ... that is pertinent.” In re Dillon,
919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.Cir.1990) (en banc)
(citations omitted).
We cannot say that Appellants have shown that there was no
motivation to make what might otherwise appear to be obvious changes.
Appellants have not shown that there is a difference in properties that would
have been unexpected to the ordinary artisan. “In order for a showing of
‘unexpected results’ to be probative evidence of non-obviousness, it falls
upon the applicant to at least establish … that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention.” In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143
(CCPA 1973) (citations omitted). Appellants state in their Briefs that the
results are unexpected, but the comments made in the Briefs are mere
attorney argument and cannot take the place of evidence. In re Greenfield,
571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) (arguments of
counsel cannot take the place of evidence). One of ordinary skill in the art
would have expected there would be a difference in results based on the
difference in materials in the core. One ordinary skill in the art also would
have also expected an improvement in the cycle retention of Sakashita’s
SiOx particles upon coating those particles with carbon because Umeno
discloses that the coating improves cycle retention by inhibiting expansion.
Furthermore, Appellants have presented test data for only carbon
coatings whereas the claims are not so limited. The data presented does not
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present examples that represent all of the particle sizes encompassed by the
claimed invention. “Establishing that one (or a small number of) species
gives unexpected results is inadequate proof, for ‘it is the view of this court
that objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support.’” In re Greenfield,
571 F.2d at 1189, 197 USPQ at 230 (quoting In re Tiffin, 448 F.2d 791, 792,
171 USPQ 294, 294 (CCPA 1971)). Appellants have not explained why the
few examples presented are representative of the entire scope of the claimed
invention.
Based on the totality of record, including due consideration of the
Appellants’ arguments and evidence, we determine that the preponderance
of evidence weighs most heavily in favor of obviousness within the meaning
of 35 U.S.C. § 103. Accordingly, we sustain the rejection of claim 1 and
those claims standing or falling therewith.
Appellants argue claim 4 separately. According to Appellants, claim
4 is limited to a carbon coating, and the Fukuoka Declarations even more
strongly support the patentability of claim 4 because these Declarations
report data on carbon coatings (Br. 16). The evidence is insufficient
because, as explained above, Appellants have not shown that the result
would have been unexpected to one of ordinary skill in the art.
With respect to claims 2, 3, 5-8, 13, 14, and 16-20 Appellants argue
that none of the features of these claims are disclosed by the cited references
(Br. 15-16). There is no sufficiently specific argument to address nor is the
Examiner’s specific reasoning disputed (Answer 4-5) and, therefore, we
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sustain the rejection of these claims for the reasons discussed above in
reference to claim 1.
With respect to claims 9 and 10, Appellants argue that the method
patentably defines over Umeno because Umeno fails to disclose or suggest
the use of SiOx and the method patentably defines over Sakashita because
Sakashita fails to disclose heating to the claimed 500-1200°C temperature
(Br. 17). We are not convinced. As pointed out by the Examiner, Umeno
describes heating to 700-1200°C when chemical vapor depositing carbon
onto the particles. When one was coating the particles of Sakashita with
carbon by CVD, one would use the temperatures suggested by Umeno or
would adjust the temperature through routine experimentation to obtain the
desired carbon coating.
With respect to claims 11 and 12, Appellants argue that Umeno and
Sakashita fail to disclose the use of a fluidized bed reactor, or a reactor
having a specified linear velocity as required by these claims (Br. 17). We
note that Umeno describes conducting the chemical vapor deposition “with
the particulate core kept in a fluidized state.” (Umeno, col. 6, ll. 10-12).
Determination of the velocity of the gas flow would have been within the
level of one of ordinary skill in the art. Cf. Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1368, 82 USPQ2d 1321, 1335-36 (Fed. Cir. 2007) (discovery of
an optimum value of a variable in a known process is usually obvious.) and
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (“[I]t is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
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III. DECISION
The decision of Examiner to reject claims 1-14 and 16-20 under
35 U.S.C. § 103(a) as unpatentable over Sakashita in view of Umeno is
AFFIRMED.

SMITH, Administrative Patent Judge, concurring-in-result.
I concur with the panel's decision to affirm the Examiner's § 103
rejection of claims 1-14 and 16-20.
I agree that a person of ordinary skill in the art to have been led to
combine the coating of Umeno with the particles of Sakashita. A person of
ordinary skill in the art would have reasonably expected that the problems
addressed by Umeno would also have been experienced by Sakashita due to
the presence of Si. As such, a person of ordinary skill in the art would have
reasonably expected that coating Sakashita’s SiOx particles would have
suppressed expansion during lithium ion alloying, and prevent further
oxidation during charging and discharging, as well as provide improved
conductivity has taught by Umeno.
I also agree that Appellants’ evidence of unexpected results is
insufficient to overcome the Examiner's prima facie case of obviousness.
Appellants have failed to point to evidence indicating that the results were
considered to be unexpected to one of ordinary skill in the art. “It is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687
(Fed.Cir.1995) (quoting In re De Blauwe, 736 F.2d 699, 705, 222 USPQ
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Application 10/237,089

191, 196 (Fed.Cir.1984)). The question here, we emphasize, is a question of
evidence and the burden is on the Appellants to show unexpected results. In
re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Further, the data relied upon by Appellants is not commensurate in
scope with the claimed invention See In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for 'it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support'.” (quoting In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294
(CCPA 1971)). Appellants test only a few compositions, as exhibited in the
Declarations. Appellants have presented test data for only carbon coatings
whereas the claims are inclusive of all conductive coatings. The data
presented does not present examples that represent all of the particle sizes
encompassed by the claimed invention. Appellants also have not explained
why the few examples presented are representative of the entire scope of the
claimed invention.

IV. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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PL/LT initials:
sld/ls

BIRCH STEWART KOLASCH & BIRCH
P.O. BOX 747
FALLS CHURCH, VA 22040-0747

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