Ex Parte Inatomi et alDownload PDFBoard of Patent Appeals and InterferencesMay 20, 201110814342 (B.P.A.I. May. 20, 2011) Copy Citation 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 Appeal 2010-000793 Application 10/814,342 2 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. Appeal 2010-000793 Application 10/814,342 3 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 Appeal 2010-000793 Application 10/814,342 4 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 Appeal 2010-000793 Application 10/814,342 5 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.) Appeal 2010-000793 Application 10/814,342 6 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 Appeal 2010-000793 Application 10/814,342 7 (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 Appeal 2010-000793 Application 10/814,342 8 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 cam Copy with citationCopy as parenthetical citation