Ex Parte Inatomi et al

Board of Patent Appeals and Interferences

May 20, 2011

10814342 (B.P.A.I. May. 20, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/814,342 04/01/2004 Yuu Inatomi 43888-309 5354
7590 05/23/2011
MCDERMOTT, WILL & EMERY
600 13th Street, N.W.
WASHINGTON, DC 20005-3096
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
05/23/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YUU INATOMI, MIKINARI SHIMADA, NORIHISA MINO, and
NOBUHIKO HOJO
____________________

Appeal 2010-000793
Application 10/814,342
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 8, 11, and 12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to an electrochemical device (battery)
including an electrode having an active material immobilized to suppress the
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dissolving of the active material into an electrolyte (Spec.1 3, last ¶). The
electrode includes an organic compound bonded to a substrate by a covalent
bond (Spec. 6, 2nd and 3rd full ¶¶). Claim 8 is illustrative:
8. An electrode for an electrochemical device,
comprising an electrode current collector made of metal and an
electrode material mixture attached on said electrode current
collector,
wherein said electrode material mixture includes a
composite material comprising an organic compound that
serves as an active material and a carbonaceous material
carrying said organic compound,
said organic compound has an electrode reaction site and
a covalent bond site in the molecule thereof,
said carbonaceous material and said covalent bond site of
said organic compound are bonded by a covalent bond, said
organic compound has a free radical as said electrode reaction
site in the molecule thereof, and
said covalent bond is at least one selected from the group
consisting of Si-O bond, Ti-O bond, C-C bond, C-O bond, and
urethane bond.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Nakahara (Nakahara ‘964)
Nakahara (Nakahara ‘697)
Nakahara (Nakahara ‘570)2
US 6,866,964 B2
US 7,226,697 B2
WO 02/082570 A1
Mar. 15, 2005
Jun. 5, 2007
Oct. 17, 2002

1 The Specification referenced herein is the Substitute Specification filed
Nov. 20, 2007.
2 Nakahara ‘570 was published in Japanese. The Examiner relies, without
objection from Appellants, on Nakahara ‘697 as an English language
equivalent of Nakahara ‘570 (Ans. 5). Accordingly, we only references
Nakahara ‘964 and Nakahara ‘697 as evidence of record herein.
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The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 8, 11, and 12 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Nakahara ‘964 or Nakahara ‘570.
2. The rejection of claims 8, 11, and 12 under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Nakahara ‘697.
For both rejections, Appellants focus their arguments on particular
claim limitations common to both independent claims 8 and 11, and do not
present any separate arguments directed to dependent claim 12. (See
generally Br. 5-8). Therefore, we decide this Appeal on the basis of
representative independent claim 8 for each rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii).
II. DISPOSITIVE ISSUE
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: does the evidence support the Appellants’
view that the Examiner erred in finding that Nakahara ‘964 and Nakahara
‘697 teach or, alternatively, would have suggested to one of ordinary skill in
the art, an active material bonded to carbonaceous material by a covalent
bond? We answer this question in the negative.
III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
The Examiner contends that “[s]ince both the claimed invention and
the prior art teach similar materials (a radical compound mixed with a
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carbonaceous material), the covalent bond limitation of the claimed
invention is considered inherent in the teachings of Nakahara” (Ans. 5 and
7).
Appellants contend that mere mixing of carbonaceous material and
active material does not necessarily form a covalent bond, but rather
additional conditions and/or treatments (such as light, heat, or an ozone
treatment) are necessary to form a covalent bond (Br. 6). Appellants’
unsupported attorney arguments are outweighed by the evidence of record.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Claim 8 recites that the electrode material includes a composite
material of an active material and a carbonaceous material in which “said
carbonaceous material and said covalent bond site of said organic compound
are bonded by a covalent bond” (claim 8). Even a single molecule of active
material covalently bonded to a single molecule of carbonaceous material
would meet the recited limitation.
Though the carbonaceous material used in Appellants’ Examples has
been subjected to an ozone treatment, the covalent bonding occurs not from
the treatment itself, but from the mere mixing of the active material with the
treated carbonaceous material. For example, in Example 1, “[t]en grams of
active carbon, which had been subjected to an ozone treatment at 120ºC for
10 minutes, was immersed in 100 ml of this treatment liquid [of the active
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material in a solvent mixture], followed by stirring for 12 hours” (Spec. 17,
first ¶).
Appellants’ Specification states that “[o]n the surface of a
carbonaceous material such as active carbon are a large number of aromatic
rings, as well as acidic substituents such as hydroxide groups, carboxyl
groups, and lactone groups” (Spec. 13, penultimate ¶). Appellants’
Specification also states that “[a]s the carbonaceous material, active carbon,
carbon black,3 graphite,3 acetylene black3, carbon nanotube, fullerene, and
the like are used. They may be subjected to a surface treatment in order to
increase the number of hydroxyl groups and carboxyl groups” (Spec. 14, 2nd
full ¶) (emphasis added). Thus, the surface of carbonaceous materials
contains hydroxyl and carboxyl groups that are capable of covalently
bonding with the active material. Additional treatments to increase the
number of hydroxyl groups and carboxyl groups are disclosed as being
optional.
Based on the evidence provided in Appellants’ Specification, it is
reasonable to conclude that the mere mixing of carbonaceous material,
having some hydroxyl and carboxyl groups on the surface thereof, and
active material would cause at least some covalent bonding at these sites,
sufficient to meet the limitations recited in claim 8.
Appellants do not dispute the Examiner’s finding that Nakahara ‘964
and Nakahara ‘697 teach the active material and the carbonaceous material
recited in claim 8 mixed together (see generally Br.). Thus, we agree with

3 Graphite, carbon black, and acetylene black are named specifically by
Nakahara as carbonaceous materials suitable for reducing the impedance
during formation of an electrode layer comprising a radical compound. (See,
e.g., Nakahara ‘964, col. 25, ll. 1-6.)
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the Examiner that the mixing of these two components, based on the
evidence provided in Appellants’ Specification, would necessarily produce
at least some covalent bonding between the two components at the locations
within the carbonaceous material where hydroxyl and/or carboxyl groups
necessarily are present.
In general, a limitation is inherent if it is the “natural result flowing
from” the explicit disclosure of the prior art. Schering Corp. v. Geneva
Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Thus, we agree with
the Examiner’s finding that Nakahara ‘964 and Nakahara ‘697 inherently
anticipate claim 8.
When a claimed product appears to be substantially identical to a
product disclosed by the prior art, the burden is on the Applicants to prove
that the product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990). Appellants have not met this burden.
Appellants assert that the electrodes of Nakahara do not have the
excellent discharge characteristics of the claimed invention, as evidenced by
Appellants’ Specification comparing the long term discharges of Example 1,
which includes covalent bonding, and Comparative Example 1, which is said
not to include covalent bonding to the active material (Br. 7; Reply Br. 2-3).
We are not persuaded by Appellants’ evidence.
We note that Example 1 is directed to using an active material of the
present invention, specifically formula (1), in combination with
carbonaceous material that has been subjected to an ozone treatment (Spec.
17, first full ¶; see also Spec. ¶ bridging p. 7-8). However, Comparative
Example 1 uses 2,5-dimercapto-1,3,4-thiadiazole as the active ingredient
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(Spec. 19, last ¶). The active material in the Comparative Example has none
of the SiX, TiX, C=C, or isocyanate groups present, as does the active
ingredient of Example 1, which Appellants’ Specification identifies as
appropriate covalent bonding sites (see Spec. 10-12). Thus, Appellants
provide no evidence to suggest that the active material in Comparative
Example 1 would have been capable of forming covalent bonds with the
carbonaceous material, surface-treated or not. The evidence does not prove
that it is the ozone treatment, and not the use of a different active material,
that is the source for the lack of covalent bonding in the Comparative
Example.
Accordingly, the evidence in the Examples cited by Appellants does
not support Appellants’ argument that the active material taught by the
Nakahara references, which Appellants do not dispute meets the active
material limitation of claim 8, would not necessarily form covalent bonds
with the carbonaceous material taught by the Nakahara references, despite
the fact that Nakahara does not teach a similar additional treatment of the
carbonaceous material.
We find it of no moment that the Nakahara references teach that the
active material is chemically bonded to the current collector (see Br. 6;
Reply Br. 2). Embodiments that include carbonaceous material are
alternative embodiments (see Nakahara ‘697, col. 7, ll. 45-50 and Nakahara
‘964, col. 25, ll. 1-6) that must be considered when evaluating the question
of obviousness. In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“[A]
prior art reference is relevant for all that it teaches to those of ordinary skill
in the art.”) The presence of a broader disclosure does not overcome fact that
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a preferred embodiment anticipates. In re Sivaramakrishnan, 673 F.2d
1383, 1384-85 (CCPA 1982).
Moreover, we are not persuaded by Appellants’ unsupported assertion
that Nakahara ‘964’s teaching, of adding the carbonaceous material to
reduce an impedance during forming of an electrode layer, is evidence that a
covalent bond is not formed because carbonaceous material would not
reduce impedance if the compound is covalently bonded to the radical
compound (Reply Br. 4). Appellants’ attorney arguments do not take the
place of evidence in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
IV. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
V. DECISION
The decision of the Examiner is affirmed.
VI. TIME PERIOD FOR RESPONSE
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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