Ex Parte Hosoya et al

Board of Patent Appeals and Interferences

Sep 29, 2009

10468900 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YOSUKE HOSOYA,
YOSHIKATSU YAMAMOTO, and TAKASHI SATO
__________

Appeal 2009-002822
Application 10/468,900
Technology Center 1700
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Decided: September 29, 2009
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Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-002822
Application 10/468,900

The Appellants request rehearing of a DECISION ON APPEAL
dated May 29, 2009,1 entering a new ground of rejection of claim 22 under
35 U.S.C. § 103(a) as unpatentable over the combination of JP 0062 and JP
466.3
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See
37 C.F.R. § 41.52(a)(1) (2007).
Discussion
The Board found that, on appeal, the Appellants did not contest the
Examiner’s finding that JP 006 discloses an oxide within the scope of at
least the first cathode material recited in claim 22. The Board also
independently found that JP 006 discloses a genus of lithium nickel
composite oxides (Lix-yAyNi1-zMzO2) comprising separate oxide species that
are “very close” in composition to both the first and second cathode
materials recited in claim 22.4 In particular, the Board found that JP 006
discloses that M is selected from six elements, including Mn and Co, and A
includes Mg. Decision 7. JP 006 discloses that the lithium nickel composite
oxides are useful as positive electrode active materials, i.e., cathode active

1 Hereinafter “Decision.”
2 JP 2001-85006 published March 30, 2001. We refer to the English
translation of this document which is of record in the instant Application.
3 JP 11-162466 published June 18, 1999.
4 See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed.
Cir. 1985) (claimed alloy rendered prima facie obvious by prior art alloys
having compositions “very close” to the claimed alloy).
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Application 10/468,900

materials, in a lithium secondary battery. JP 006, para. [0001]; see also
Decision 9 (finding that the positive electrode active materials disclosed in
JP 006 correspond to the “cathode active material” recited in claim 22).
On rehearing, the Appellants do not point to any error in the Board’s
findings. Rather, the Appellants argue that JP 006 does not disclose a
specific example of a lithium nickel composite oxide within the scope of
either the first or second cathode material recited in claim 22. Request 5-6.5
The Appellants’ argument is not persuasive of reversible error. The
rejection on appeal is based on obviousness under 35 U.S.C. § 103(a), not
anticipation under 35 U.S.C. § 102.6 Therefore, it is of no moment that JP
006 may not disclose a specific example of either the first or second cathode
material recited in claim 22. The issue under §103 is whether the claimed
cathode materials would have been obvious to one of ordinary skill in the art
in view of the teachings of JP 006.7
In this case, the Appellants have failed to direct the Board to any
evidence establishing that the first and second cathode materials recited in
claim 22 are not rendered obvious by JP 006. In particular, the Appellants
have failed to explain why the teachings of JP 006 would not have suggested
the claimed cathode materials.

5 Request for Rehearing dated July 28, 2009.
6 Since the rejection is not based on anticipation under §102, it is not
necessary to address the Appellants’ reliance on Atofina v. Great Lakes
Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). See Request 6.
7 Anticipation under §102, not obviousness under §103, requires every
element recited in a claim to be found in a prior art reference, arranged as
recited in the claim under review. In re Bond, 910 F.2d 831, 833 (Fed. Cir.
1990).

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Application 10/468,900

The Appellants do direct the Board’s attention to In re Baird, 16 F.3d
380 (Fed. Cir. 1994). Request 6. However, the Appellants do not explain
why the reasoning in Baird is applicable to the facts in this case. In contrast
to the prior art in Baird, JP 006 discloses a limited number of selections for
M and A. See JP 006, para. [0019]; cf. Baird, 16 F.3d at 382.
The Appellants also argue that JP 006 fails to disclose an example of a
mixture of two lithium nickel composite oxides. Request 7-8. Similarly, the
Appellants argue that JP 466 does not disclose an example of either the first
or second cathode material recited in claim 22 or an example of a mixture of
the claimed cathode materials. Request 8-14.
The Appellants’ arguments fail to consider the prior art as a whole.8
It is of no moment in the §103 rejection on appeal that JP 006 does not
disclose an example of a mixture of cathode materials. Likewise, it is of no
moment that JP 466 does not disclose an example of the first and second
cathode materials recited in claim 22, either individually or in a mixture.
The Board relied on JP 006 to establish that both the first and second
cathode materials recited in claim 22 would have been obvious to one of
ordinary skill in the art at the time of the Appellants’ invention. The Board
relied on JP 466 to establish that cathode materials comprising mixtures of
lithium nickel composite oxides were known in the art.9 Based on these

8 “The test for obviousness is not . . . that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981).
9 The Board also found that it would have been within the skill of the
ordinary artisan to combine two of the oxide species in JP 006, which are
known to be useful as cathode materials, to form a third material that is also
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Appeal 2009-002822
Application 10/468,900

findings, the Board concluded that the combined teachings of JP 006 and JP
466 render obvious a mixture of the first and second cathode materials
recited in claim 22. Decision 7-8. Significantly, on rehearing, the
Appellants do not point to any error in the Board’s findings of fact or
conclusion of law.
Next, the Appellants argue that JP 006 and JP 466 teach away from
combining an oxide of JP 006 with the first oxide of JP 466 because the
mean grain sizes of the oxides are different. Request 15-16.
The Appellants’ argument misconstrues the Board’s rejection of claim
22. The Board is not combining the oxides of JP 006 and JP 466. Rather, as
discussed above, the Board merely relies on the teachings of JP 466 to
establish that mixtures of lithium nickel composite oxides, in general, were
known in the art at the time of the Appellants’ invention. Decision 8.
Finally, the Appellants rely on comparative tests in the Specification
to establish unexpected results. In particular, the Appellants argue that
Tables 1-7 in the Appellants’ Specification show that the invention of claim
22 exhibits “superior” discharge capacity in comparison with Tables 1-3 of
JP 466. Request 17.
On rehearing, the Appellants have failed to explain why the oxides
disclosed in JP 466, rather than the oxides disclosed in JP 006, are the
closest prior art. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(an applicant must compare the claimed invention to the closest prior art).
Furthermore, to the extent that the claimed cathode active material does
exhibit “superior” discharge capacity, the Appellants have failed to direct the

useful as a cathode material. Decision 8. On rehearing, the Appellants do
not contest this finding.
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Application 10/468,900

Board to any evidence establishing that the discharge capacity of the claimed
cathode active material would have been unexpected. In re Freeman, 474
F.2d 1318, 1324 (CCPA 1973).
For the reasons set forth above, the Appellants have failed to show
that the Board erred in rejecting claim 22 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of JP 006 and JP 466.
Conclusion
The Appellants’ Request for Rehearing has been granted to the extent
that the new ground of rejection set forth in the DECISION ON APPEAL
dated May 29, 2009, has been reconsidered in light of the Appellants’
arguments. However, the Request is denied because the Decision is not
modified in any respect.
REHEARING DENIED

tc

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