Ex Parte Inagaki et alDownload PDFPatent Trial and Appeal BoardDec 19, 201611965303 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 11/965,303 12/27/2007 Hiroki INAGAKI 320247US0SRD 3265 22850 7590 12/21/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER CHMIELECKI, SCOTT J ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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 ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROKIINAGAKI, YUMI FUJITA, and NORIO TAKAMI Appeal 2015-001094 Application 11/965,303 Technology Center 1700 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1—3 and 5—23. A hearing was held on December 9, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The claims on appeal are directed to a nonaqueous electrolyte battery comprising, inter alia, a nonaqueous electrolyte consisting of at least one silyl phosphate, a sultone having an unsaturated hydrocarbon group, an organic solvent, Appeal 2015-001094 Application 11/965,303 and an electrolyte dissolved in the organic solvent. Independent claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated July 25, 2014 (“App. Br.”). 1. A nonaqueous electrolyte battery comprising: a positive electrode; a negative electrode containing a titanium-containing oxide; and a nonaqueous electrolyte consisting of (a) at least one compound selected from the group consisting of tris(trimethylsilyl) phosphate, tris(triethylsily 1) phosphate, tris(vinyldimethylsilyl) phosphate, bis(trimethylsilyl)methyl phosphate, bis(trimethylsilyl)ethyl phosphate, bis(trimethylsilyl)-n-propyl phosphate, bis(trimethylsilyl)-i-propyl phosphate, bis(trimethylsilyl)- n-butyl phosphate, bis(trimethylsilyl)trichloroethyl phosphate, bis(trimethylsilyl)trifhioroethyl phosphate, bis(trimethylsilyl)pentafluoropropyl phosphate, bis(trimethylsilyl)phenyl phosphate, dimethyltrimethylsilyl phosphate, diethyltrimethylsilyl phosphate, di-n-propyltrimethylsilyl phosphate, di-i-propyltrimethylsilyl phosphate, di-n-butyltrimethylsilyl phosphate, bis(trichloroethyl)trimethylsilyl phosphate, bis(trifhioroethyl)trimethylsilyl phosphate, bis(pentafhioropropyl)trimethylsilyl phosphate and diphenyltrimethylsilyl phosphate and (b) a sultone having an unsaturated hydrocarbon group, an organic solvent and an electrolyte dissolved in the organic solvent, wherein the organic solvent is at least one solvent selected from the group consisting of propylene carbonate, ethylene carbonate, vinylene carbonate, diethyl carbonate, dimethyl carbonate, methyl ethyl carbonate, tetrahydrofuran, 2-methyhetrahydrofuran, dioxolan, dimethoxyethane, diethoxyethane, y-butyrolactone, acetonitrile and sulfolane, the concentration of (a) in the nonaqueous electrolyte is from 0.1 to 10% by weight, and 2 Appeal 2015-001094 Application 11/965,303 the concentration of (b) in the nonaqueous electrolyte is from 0.1 to 2% by weight. App. Br. 8 (emphasis added). Claim 1, the sole claim at issue, stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hiwara et al.1 in view of Takahashi.2’3 B. DISCUSSION Hiwara discloses a nonaqueous electrolyte solution comprising a nonaqueous solvent, an electrolyte, a sultone compound, and an ethylene carbonate having a hydrogen atom substituted by a fluorine atom (referred to herein as “fluorinated ethylene carbonate”). Hiwara 112. The Appellants argue that the transitional phrase “consisting of’ in claim 1 excludes fluorinated ethylene carbonate from the claimed nonaqueous electrolyte. App. Br. 6. Moreover, the Appellants argue that fluorinated ethylene carbonate is an essential constituent in Hiwara’s nonaqueous electrolyte solution. App. Br. 5—6. Therefore, “[o]ne skilled in the art would not be motivated to remove the ethylene carbonate having a hydrogen atom substituted by a fluorine atom from the battery of Hirawa [sic, Hiwara].” App. Br. 6. The Appellants’ arguments are supported by the record. First, it is well settled that “‘closed’ transition phrases such as ‘consisting of are understood to exclude any elements, steps, or ingredients not specified in the claim.” AFG Indus., Inc. v. CardinalIG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001). Thus, claim 1 excludes the fluorinated ethylene carbonate described in Hiwara. 1 US 2009/0226808 Al, published September 10, 2009 (“Hiwara”). 2 JP 2003-163029, dated June 6, 2003 (“Takahashi”). 3 The rejections of the remaining claims on appeal (claims 2, 3, and 5—23) are set forth on pages 2—10 of the Examiner’s Answer dated August 27, 2014 (“Ans.”). 3 Appeal 2015-001094 Application 11/965,303 Second, the Examiner has failed to explain, in any detail, why one of ordinary skill in the art would have excluded the fluorinated ethylene carbonate from Hiwara’s nonaqueous electrolyte solution. In that regard, we note the following disclosure in Hiwara: The . . . sultone compound exerts the effect of forming a protective film that prevents lifespan shortening on the surface of an electrode of a nonaqueous electrochemical element. However, this protective film contains a large amount of inorganic ingredients. Consequently, although the resistance properties of the film against the nonaqueous electrolyte solution are sufficient even in high temperature conditions, there is a fear that the ionic conductivity will be insufficient. The ethylene carbonate having a hydrogen atom substituted by a fluorine atom also forms a protective film. However, this protective film contains a large amount of organic ingredients. Consequently, although problems in ionic conductivity are not many, the resistance properties against the nonaqueous electrolyte solution consisting mainly of an organic solvent are not sufficient in high temperature conditions. Accordingly, when both of them are contained in the protective film at the same time, shortcomings of each other can be mutually compensated, and therefore a protective fdm having excellent resistance properties against the nonaqueous electrolyte solution and having little problem in ionic conductivity can be formed on the electrode. As a result, it is considered that an electrolyte solution can be obtained having unprecedented levels of synergistically enhanced charge/discharge cycle characteristics in high temperature conditions, and having little problem in charge/discharge load characteristics. Hiwara 149 (emphasis added). Based on the foregoing disclosure, we concur with the Appellants that one of ordinary skill in the art would have understood that fluorinated ethylene carbonate is an essential constituent in Hiwara’s nonaqueous electrolyte solution. 4 Appeal 2015-001094 Application 11/965,303 In the alternative, the Examiner finds: Hiwara explicitly discloses a nonaqueous electrolyte solution consisting of tris(trimethylsilyl) phosphate, a solvent, in this case a mixture of ethylene carbonate and ethyl methyl carbonate, an electrolyte dissolved in the solvent, in this case LiPF6, and a sultone with an unsaturated hydrocarbon group, in this case 1,3 propene sultone (see para. 0057; Comparative Example 2, para. 0096; Comparative Example 3, para. 0097; Table 1), which read upon the claimed nonaqueous electrolyte of claim 1. Ans. 11. Turning to Comparative Examples 2 and 3, Hiwara discloses that the nonaqueous electrolyte solutions in those examples consist of (1) ethylene carbonate and ethyl methyl carbonate as a nonaqueous solvent, (2) LiPF6 as an electrolyte, and (3) 1,3-prop-1-ene sultone. See Hiwara ]fl[ 79, 95—97. The nonaqueous electrolyte solutions in Comparative Examples 2 and 3 do not include compound (a) in Appellants’ claim 1 (e.g., tris(trimethylsilyl) phosphate). See Reply Br. 3.4 We recognize that “[t]he nonaqueous electrolyte solution of the invention [disclosed in Hiwara] may include other additive(s) as necessary” such as tris(trimethylsilyl) phosphate. Hiwara ]ff[ 56, 57. However, the nonaqueous electrolyte solutions described in Hiwara Comparative Examples 2 and 3 are not the nonaqueous electrolyte solutions of Hiwara’s invention because they do not contain fluorinated ethylene carbonate. See Reply Br. 4. On this record, the Examiner has failed to explain, in any detail, why one of ordinary skill in the art would have added tris(trimethylsilyl) phosphate to the nonaqueous electrolyte solution described in either Comparative Example 2 or Comparative Example 3 of Hiwara. 4 Reply Brief dated October 27, 2014. 5 Appeal 2015-001094 Application 11/965,303 The Examiner’s reliance on the remaining prior art of record does not cure the deficiencies in Hiwara identified above. Therefore, the § 103(a) rejections on appeal are not sustained. C. DECISION The Examiner’s decision is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation