Ex Parte Itou et al

Patent Trial and Appeal Board

Apr 10, 2013

10581858 (P.T.A.B. Apr. 10, 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.
10/581,858 06/30/2006 Takanori Itou 040302-0569 4646
22428 7590 04/10/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
04/10/2013 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 TAKANORI ITOU, TAKAMITSU SAITO, and
HIDEAKI HORIE
____________________

Appeal 2012-002914
Application 10/581,858
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-3, and 6 under 35 U.S.C. § 103(a) as obvious over
Mao1 in view of Huang2, as evidenced by Nagayama3. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 Mao et al., US 6,071,649, patented Jun. 6, 2000.
2 Huang, US 2003/0157409 A1, pub. Aug. 21, 2003.
3 Nagayama, JP 7-245105, pub. Sep. 19, 1995 (as translated).
Appeal 2012-002914
Application 10/581,858

2
The claims are directed to a positive electrode material for use in non-
aqueous electrolyte batteries (Claim 1), and a battery using the positive
electrode material (Claim 6). All of the claims require the positive electrode
material recited in claim 1. Claim 1 reads:
1. A positive electrode material for non-aqueous
electrolyte lithium ion battery, comprising:
an oxide containing lithium and nickel; and
a lithium compound deposited on a surface of the oxide,
wherein the lithium compound is lithium sulfate.
(Claims App’x at Br. 19.)
Claim 1 requires a deposit of lithium sulfate on an oxide containing
lithium and nickel (e.g., LiNiO2).
While the Examiner reads Mao as suggesting coating an oxide
containing lithium and nickel with a genus of compounds encompassing
lithium sulfate (Ans. 8-9), we find this reading of Mao is incorrect. The
Examiner’s finding relies upon the disclosure of coating with “another
material” citing column 3, lines 1-7 of Mao (id.). However, column 3, lines
1-7 must be read in the context of the reference as a whole and, particularly,
in view of the specific coating compound genus disclosed in column 2, lines
55-57. Contrary to the findings of the Examiner, Mao is particularly limited
to coating a first lithiated transition metal oxide material (e.g., LiNiO2) with
a second lithiated transition metal oxide such as LiCoO2 or LiCoxNi1-xO2
(Mao, col. 2, ll. 50-57). As pointed out by Appellants lithium sulfate is not a
lithiated transition metal oxide (Br. 9). Lithium sulfate is wholly outside of
the coating compounds contemplated by Mao.
Appeal 2012-002914
Application 10/581,858

3
According to the Examiner, it would have been obvious to one having
ordinary skill in the art at the time of the invention to use lithium sulfate
instead of LiCoO2 to cover oxides of lithium and nickel “since one having
ordinary skill in the art at the time of the invention would have had
reasonable expectation of success in doing so as evidenced by Huang (Claim
5).” (Ans. 6.) Claim 5 of Huang merely lists Li2SO4 as a lithium salt that
may be selected as an active material. The Examiner cites to no persuasive
evidence that the lithium sulfate of Huang is intended to coat an oxide of
lithium and nickel.
The Examiner reasons that “as long as the lithium compound covers
the oxide containing lithium and nickel, one having ordinary skill in the art
at the time of the invention would have reasonably expected a success of
inhibition of decomposition of the electrolyte solution since the contact
surface of the oxide containing lithium and nickel is decreased (as evidenced
by Nagayama [0022]).” (Ans. 6). But Nagayama describes coating LiNiO2
with lithium carbonate (Nagayama ¶ [0022]). The Examiner does not
explain why one of ordinary skill in the art would have reasonably expected
a coating of lithium sulfate to provide the properties that Nagayama
discloses only for a coating of lithium carbonate.
The Examiner fails to provide sufficient evidence that those of
ordinary skill in the art understood lithium sulfate to be useful for coating
oxides of lithium and nickel. The evidence as a whole fails to establish a
prima facie case of obviousness.
CONCLUSION
We do not sustain the Examiner’s rejection.

Appeal 2012-002914
Application 10/581,858

4
DECISION
The Examiner’s decision is reversed.
REVERSED

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