Ex Parte HARADA et alDownload PDFPatent Trials and Appeals BoardMay 23, 201914202749 - (D) (P.T.A.B. May. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/202,749 03/10/2014 Yasuhiro HARADA 22850 7590 05/28/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 431943US20RD 3064 EXAMINER WEI, ZHONGQING ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 05/28/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte Y ASUHIRO HARADA, NORIO TAKAMI, HIROKI INAGAKI, YORIKAZU YOSHIDA, and KAZUKI ISE Appeal2018-006153 Application 14/202, 7 49 Technology Center 1700 Before KAREN M. HASTINGS, MERRELL C. CASHION, JR., and JANEE. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-3 and 8-12 under 35 U.S.C. § 103(a) over the combination of Lu et. al. (Xia Lu, et al., Atomic-scale investigation on lithium storage mechanism in TiNb201, Energy Environ. Sci., 4, 2638--44, (2011)) ("Lu") and Hattori et al. (US 6,187,282 Bl; Feb. 13, 2001) ("Hattori"). 2 1 Appellant is the applicant, Kabushiki Kaisha Toshiba, which is also stated to be the real party in interest (Appeal Br. 2). 2 Claims 4---6 has been withdrawn. Claim 7 has been cancelled. Appeal2018-006153 Application 14/202, 7 49 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. CLAIMED SUBJECT MATTER Independent claim 1 is illustrative ( emphasis added to highlight key disputed limitation): 1. An active material for battery comprising a monoclinic complex oxide which is expressed by the general formula LixMIM220(7±S) wherein Ml is at least one element selected from the group consisting of Ti, Zr, Si, and Sn, M2 is at least one element selected from the group consisting of Nb, V, Ta, Bi, and Mo, 0 :S x :S 5, 0 :S8 :S 0.3, and has symmetry belonging to the space group C2/m in International tables Vol. A No. 12, one element of the M2 or Ml being maldistributed in the occupied 2a and 4i sites in a crystal of the monoclinic complex oxide; and wherein in the occupied 2a site in the crystal of the monoclinic complex oxide, an occupancy gl vu of Ml is 0.231 or less, an occupancy gM2 ofM2 is 0.769 or more, gM1+ gM2 is 1.0, and the occupancies gMi and gM2 are determined by the Rietveld method. 2 Appeal2018-006153 Application 14/202, 7 49 ANALYSIS We review the appealed§ 103 rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that Appellant identifies reversible error, and we affirm the Examiner's § 103 rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992). First, Appellant argues that one would have not performed the annealing step of Hattori ( which Appellant agrees causes the atoms of Hattori to be randomly arranged) on the TiNb207 complex oxide of Lu ( e.g., Appeal Br. 4, 5; Reply Br. 4). This argument is not persuasive of error in the Examiner's rejection. As aptly pointed out by the Examiner, Hattori is 3 Appeal2018-006153 Application 14/202, 7 49 relied upon to exemplify that an annealing step after sintering is well known in the art of preparing a (lithium) complex oxide for battery use, and improves cycle life and storage stability of such a battery (Ans. 4, 5; Hattori col. 10, 11. 44--50). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner's determination that one of ordinary skill in the art, using no more than ordinary creativity, would have performed such an annealing step after sintering Lu's complex oxide. Appellant's remaining arguments focus on whether the claim limitation regarding the maldistribution of one of the metals of Lu in the occupied 2a and 4i sites would have resulted if one had subjected the complex oxide product of Lu to an annealing treatment as exemplified in Hattori after its sintering (Appeal Br. 5-7; see generally Reply Br.). These arguments are not persuasive of reversible error in the Examiner's rejection. There is no dispute that Lu teaches a material falling within the scope of claim 1 that has been sintered at high temperatures ( e.g., Appeal Br. 4; Spec. 9: 19-21 ( the preferred complex oxide of Appellant's invention is TiNb207 )). The Examiner points out that Lu indeed does state "Ti and Nb atoms (atomic ratio: 0.5) share the same 2a and 4i sites in the lattice" and further discusses the possibility of "Ti and Nb disordered antisites" (Lu p. 2640, first full paragraph; Final Act. 3). The Examiner also reasons that once Lu is modified to perform the annealing step of Hattori, one skilled in the art would have expected that the claimed maldistribution would have occurred since such a method is akin to the method described by Appellant to achieve the maldistribution recited in claim 1 ( e.g., Ans. 6). For the first time, Appellant contends in the Reply Brief that a calcination step must be performed, as well as multiple sintering steps, 4 Appeal2018-006153 Application 14/202, 7 49 before annealing in order to achieve the recited maldistribution (Reply Br. 2). Appellant has not shown good cause why these arguments could not have been presented in the Appeal Brief. Therefore, we need not consider the arguments newly raised in the Reply Brief. 37 C.F.R. § 4I.41(b)(2). In any event, it has been held that when the Examiner establishes a reasonable basis that the products ( or processes) claimed by the applicant and disclosed in the prior art appear to be the same or substantially similar, the burden is properly shifted to the applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254--56 (CCPA 1977). Cf In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004). See also In Re Dillion, 919 F.2d 688 (Fed. Cir. 1990) (a prima facie case of obviousness does not require both structural similarity and a suggestion in or expectation from the prior art that the claimed compound will have the same or a similar usefulness as the applicants newly discovered compound; exactly what amounts to a prima facie case varies from case to case.) Here, the Examiner's determination that the resultant product from a Lu/Hattori process appears to be the same or substantially similar to those as claimed and disclosed is reasonable. Appellant fails to adequately show that such a process would not have resulted in the claimed maldistribution. Appellant also fails to show with sufficient evidence or adequate technical reasoning that without performing every step described in the Specification, the resultant maldistribution will not occur. Notably, Appellant's original method claim 6 does not require a calcination step or that sintering be done multiple times (Claims Appendix). Appellant does not direct us to any evidence in the Specification to show that a TiNb207 complex oxide must be 5 Appeal2018-006153 Application 14/202, 7 49 processed in accordance with the preferred method detailed therein to have the maldistribution as recited. Indeed, Appellant's Specification indicates the process may be performed on either the TiNb207 or on a lithium containing compound such as lithium carbonate (Spec. 15: 10-15), thus further highlighting the lack of factual evidence. As pointed out by the Examiner, technical assertions unsupported by factual evidence are not persuasive (Ans. 4, citing In re Geisler, 116 F. 3d 1465, 1470 (Fed. Circ. 1987). It has long been established that attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant's arguments thus do not point out reversible error in the Examiner's rejection of claim 1, and a preponderance of the evidence supports the Examiner's obviousness determination. Appellant does not separately argue any of the remaining dependent claims. Accordingly, the Examiner's§ 103 rejection is affirmed with respect to all of the claims on appeal. 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)(iv). ORDER AFFIRMED 6 Copy with citationCopy as parenthetical citation