Ex Parte Inoue et al

Patent Trial and Appeal Board

May 30, 2013

11883815 (P.T.A.B. May. 30, 2013)

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.
11/883,815 05/19/2008 Takao Inoue 070393 6651
23850 7590 05/30/2013
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
DOUYETTE, KENNETH J
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
05/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKAO INOUE,
MASAHISA FUJIMOTO, and KUMIKO KANAI
____________

Appeal 2012-000483
Application 11/883,815
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 6-8, 10, and 11. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2012-000483
Application 11/883,815

2
Appellants’ claimed invention is directed to a non-aqueous electrolyte
secondary battery including an elemental germanium –containing negative
electrode, a positive electrode including an oxide containing sodium and
manganese, and a non-aqueous electrolyte containing sodium ions. Further
details are evident from a review of claim 1, the sole independent claim on
appeal, as reproduced below:
1. A non-aqueous electrolyte secondary battery,
comprising:
a positive electrode including an oxide containing sodium
and manganese;
a negative electrode that contains elemental germanium;
and
a non-aqueous electrolyte containing sodium ions,
wherein
said sodium ions substantially serve to move electric
charges, and wherein
the crystal structure of said oxide is a hexagonal system,
an orthorhombic system, a monoclinic system, or a tetragonal
system.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Doeff US 5,558,961 Sept. 24, 1996
Idota US 5,571,637 Nov. 5, 1996
Takada US 2004/0166409 A1 Aug. 26, 2004
Kawakami EP 1 339 116 A2 Aug. 27, 2003
Claims 1, 2, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Idota in view of Doeff. Claims 6 and 11 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Idota in view of Doeff
Appeal 2012-000483
Application 11/883,815

3
and Kawakami. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Idota in view of Doeff, Kawakami, and Takada.
On this record, we affirm the stated rejections based on essentially the
fact findings and for substantially the reasons set forth by the Examiner
(Ans. 4-10).
We add the following for emphasis.
Appellants do not specifically dispute the Examiner’s fact findings as
to the teachings of any of the applied references and/or contest the stated
rejections as failing to present a prima facie case of obviousness as to the
rejected claims (see generally App. Br. And Reply Br.). Rather, Appellants
argue that a battery made in accordance with the provisions of rejected
independent claim 1 is attended by unexpected results as compared with
batteries made in accordance with the applied references as evinced by
batteries made in accordance with the second and third embodiments of the
subject Specification (App. Br. 10-11). Substantially the same argument is
presented for each of the stated rejections (id. at 10-15).
Accordingly, we need only address claim 1 as the representative claim
for the first stated rejection and as representing the only subject matter
pertaining to certain dependent claims separately rejected in resolving the
merits of the second and third stated rejections that are being contested only
on the basis of asserted unexpected results said to be supplied in the subject
Specification.
The question before us is: Have Appellants presented evidence that
demonstrates unexpected results for the claim 1 subject matter as compared
with the closest prior art that is reasonably commensurate in scope with
claim 1, and which evidence of unexpected results has been shown to be of
Appeal 2012-000483
Application 11/883,815

4
such a character and weight that the Examiner’s otherwise uncontested
prima face case of obviousness is outweighed by the relied upon evidence
presented in the Specification Examples that is argued to indicate the non-
obviousness of the claimed subject matter?
We answer this question in the negative and affirm the Examiner’s
stated obviousness rejections.
We agree with the Examiner’s conclusion that Appellants have failed
to carry the burden to establish that the proffered evidence is sufficient to
outweigh the evidence of obviousness supplied by the Examiner (Ans. 9-10).
In this regard, the burden of production rests with Appellants to establish
that the reported tests provide results that are unexpected, that the
comparisons are with the closest prior art, and that the showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Appellants maintain that the relied upon second and third
Specification embodiments and Examples 2 and 3demonstrate that “a
secondary battery using a germanium negative electrode can have a capacity
which is approximately twice as large as that of a secondary battery using a
tin negative electrode, and an unexpected effect is achieved” (Reply Br. 2;
see App. Br. 10-11). However, Appellants have not carried their burden and
established that the evidence supplied in the Specification furnishes results
for the claimed invention that are truly unexpected over the extensive scope
of representative claim 1 when compared with the closest prior art to
establish unexpected results which are reasonably commensurate in scope
with the claimed subject matter.
Appeal 2012-000483
Application 11/883,815

5
Consistent with the Examiner’s obviousness conclusion (Ans. 9-10),
Appellants have not established that the tin negative electrode comparison
example is truly representative of the closest prior art and that the reported
results for the tested germanium negative electrode battery is truly
unexpected to one of ordinary skill in the art. In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”) In this regard, attorney argument does
not take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
In this regard, the Examiner has found, without dispute, that Idota, as
applied in the base rejection pertaining to independent claim 1 and all of the
other stated rejections, teaches a sodium-containing non-aqueous electrolyte
secondary battery having a negative electrode that includes elemental
germanium and a positive electrode that includes an oxide of sodium and
manganese (Ans. 4-5 and 9-10). Appellants proffer no scientific or technical
explanation as to why the comparison tin negative electrode battery is
considered to be representative of the closest prior art.
In addition and for example, the third embodiment of the
Specification and Example 3 of the Specification employ a battery having a
negative electrode made of a rolled foil of surface roughened copper that is
formed into a negative electrode collector onto which collector a negative
electrode active germanium in a 0.5 micron thick amorphous germanium
layer is deposited (Spec. 19, l. 4 - 20, l. 15 and 23, ll. 4-24).
Representative claim 1, on the other hand, is not so limited as it
employs open comprising language and does not specify any particular form
Appeal 2012-000483
Application 11/883,815

6
for a negative electrode, such as a rolled foil of surface roughened copper,
and does not require the presence of any particular amount of elemental
germanium and/or an amorphous geranium layer at all, much less a specified
thickness thereof on a surface roughened copper as utilized in Specification
Example 3.
Appellants have not proffered any persuasive scientific explanation
articulating why the reported results for the limited examples presented
would have been logically expected to accrue over the much more extensive
scope of the representative claim 1 subject matter so as to discharge
Appellants’ burden of establishing unexpected results that are reasonably
commensurate in scope with the claimed subject matter (see generally App.
Br. and Reply Br.). In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)) (“Establishing that
one (or a small number of) species gives unexpected results is inadequate
proof, for ‘it is the view of this court that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.’”); see also In re Dill, 604 F.2d 1356, 1361
(CCPA 1979).
Based on the totality of the record, including due consideration of
Appellants’ evidence and arguments, we determine that the preponderance
of evidence weighs most heavily in favor of an obviousness determination
for the claimed subject matter. Accordingly, we affirm the stated grounds of
rejection maintained by the Examiner for the reasons stated in the Answer
and above.

Appeal 2012-000483
Application 11/883,815

7
ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
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

bar