Ex Parte Inagaki et al

Patent Trial and Appeal Board

Feb 28, 2017

13053913 (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.
13/053,913 03/22/2011 Hiroki INAGAKI 377956US2SRD 9117
22850 7590 03/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1723
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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROKIINAGAKI,
WEN ZHANG, YASUHIRO HARADA, KEIGO HOSHINA,
YUKI OTANI, and NORIO TAKAMI
Appeal 2015-007333
Application 13/053,913
Technology Center 1700
Before BEVERLEY A. FRANKLIN, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—14 of Application 13/053,913
under 35 U.S.C. § 103(a) as obvious. Final Act. (September 12, 2014).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Kabushiki Kaisha Toshiba is identified as the real party in interest. Appeal
Br. 1.
Appeal 2015-007333
Application 13/053,913
BACKGROUND
The ’913 Application describes an active material for a non-aqueous
electrolyte battery, a battery pack, and an electric vehicle. Spec. 1.
Claim 1—the only independent claim before us on appeal—is representative
of the ’913 Application’s claims and is reproduced below from the Claims
Appendix:
1. A negative electrode active material for a battery,
comprising secondary particle [s] which contain primary
particles of a monoclinic P-type titanium composite oxide
having an average primary particle diameter of 1 nm to 10 pm,
and which has an average secondary particle diameter of 1 pm
to 100 pm,
wherein the secondary particle has a compression
fracture strength of 20 MPa or more.
Appeal Br. 6.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—5, 7, and 9-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of JP ’401 and JP ’354.2 Final
Act. 3.
2. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of JP ’401,3 JP ’354, and
Inagaki.4 Final Act. 6.
2 JP 2010-123401, published
3 JP 2009-283354, published
4 US 2009/0042095 Al, published February 12, 2009.
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Appeal 2015-007333
Application 13/053,913
DISCUSSION
Rejection 1. The Examiner rejected claims 1—5, 7, and 9-14 as
unpatentable over the combination of JP ’401 and JP ’354. Final Act. 3.
Appellants argue for reversal of this rejection based on the limitations of
claim 1 and do not present any separate arguments for reversal of the
rejection of the dependent claims. Thus, all the claims subject to this
rejection will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
In rejecting claim 1, the Examiner found that JP ’401 “teaches a
composition and structure substantially identical to that of the claims and
therefore the material properties are assumed to be anticipated or in the
alternative, obvious . . . because the material properties naturally flow from
structure and composition of the material.” Final Act. 4. The Examiner also
found that JP ’354 describes the desirability of increasing the compression
fracture strength of the secondary particles to the range of 40 to 100 MPa
because this allows for higher filling density in the electrode, thereby
improving the electrode’s electrochemical properties. Id. (citing JP ’354
H 39-49). The Examiner further found that JP ’354 teaches the ability to
increase the fracture strength of the secondary particles. Answer 8 (citing JP
’354 || 39-41).
Appellants argue that the rejection of claim 1 should be reversed
because “[t]he cited references, taken in combination, fail to suggest the
claimed negative electrode active material for a battery.” Appeal Br. 3. In
particular, Appellants argue that Inagaki Declaration demonstrates that
“[t]he method described by JP 401 cannot achieve secondary particles
having a compression fracture strength of 20 MPa or more.” Id.
We agree with the Examiner that the Inagaki Declaration is
insufficient to establish the patentability of the subject matter of claim 1.
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Appeal 2015-007333
Application 13/053,913
We begin by noting that the Declaration does not contain sufficient
experimental detail to establish that the method used to prepare Comparative
Example A is a method disclosed in JP ’401. Furthermore, JP ’401
describes a wide range of reaction conditions which may be used. See, e.g.,
JP ’401 54—56 (describing a variety of solvent systems, reaction
pressures, and reaction temperatures). Thus, the single experiment reported
in the Inagaki Declaration is insufficient to demonstrate that the methods
described in JP ’401 cannot produce secondary particles with a compression
fracture strength in excess of 20 MPa.
Even if we were to assume arguendo that the single experiment
reported did suffice to establish that the methods described in JP ’401 are
incapable of creating secondary particles with the claimed compression
fracture strength, the Inagaki Declaration would still be insufficient to
establish patentability of the subject matter of claim 1. Claim 1, after all,
was rejected as unpatentable over the combination of JP ’401 and JP ’354.
As the Examiner found, JP ’354 provides a person having ordinary skill in
the art with both reason to want to increase the secondary particle’s
compression fracture strength and a method for doing so. See JP ’354 ||
39-49.
Appellants assert that the use of spray drying is critical to achieve the
claimed secondary particle compression fracture strength. Reply Br. 4—5.
Indeed, Appellants assert that “[a]n active material in the form of particles
and having a high strength cannot be produced by a production method that
does not include spray-drying starting materials (see the Rule 132
Declaration of record).” Id. This assertion overgeneralizes the results of the
single experiment described in the Inagaki Declaration and is unsupported
by the evidence of record.
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Appeal 2015-007333
Application 13/053,913
Appellants also assert that the method described in JP ’354 for
increasing the compression fracture strength of secondary particles is
inapplicable to the claimed monoclinic P-type titanium composite oxides
because JP ’354 uses a different material. Id. at 5 (“[E]ven if the method
described in JP ’354 is applied to a monoclinic P type titanium composite
oxide, the same effect cannot be obtained.”). This assertion, however, is
attorney argument that is unsupported by evidence. It is well settled that
arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants have not
directed our attention to any evidence—either in the Inagaki Declaration or
elsewhere in the record—that supports the assertion.
In sum, we do not discern reversible error in the Examiner’s rejection
of claim 1 as unpatentable over the combination of JP ’401 and JP ’354.
Rejection 2. The Examiner rejected claims 6 and 8 as unpatentable
over the combination of JP ’401, JP ’354, and Inagaki. Final Act. 6. Claims
6 and 8 depend from claim 1. Because we have affirmed the rejection of
claim 1 and Appellants have not offered specific arguments for reversal of
the rejection of claims 6 and 8, we also affirm the rejection of claims 6
and 8.
CONCFUSION
For the reasons set forth above, we affirm the rejection of claims 1—14
of the ’913 Application.
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Appeal 2015-007333
Application 13/053,913
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
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