Ex Parte Kajiya et al

Board of Patent Appeals and Interferences

Mar 19, 2010

10489046 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YOSHIO KAJIYA
and HIROSHI TASAKI1
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Appeal 2009-003707
Application 10/489,046
Technology Center 1700
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Decided: March 19, 2010
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Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 The Inventor’s Oath (PTO/SB/106) and the PCT priority document
indicate the second inventor’s name is mis-spelled (“Takasaki”) on the “Bib
Data Sheet” in the USPTO file.

Appeal 2009-003707
Application 10/489,046

A. Introduction2
Yoshio Kajiya and Hiroshi Tasaki (“Appellants”)3 timely appeal
under 35 U.S.C. § 134(a) from the final rejection4 of claims 2-4, 6, and 7.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a two-stage continuous process
for the production of finely powdered, dense manganese oxide (Mn2O3) from
manganese carbonate (MnCO3). The process is said to be an improvement
over a prior art two-stage batch process described earlier by the inventors.
In both the prior art and the claimed process, MnCO3 is heated in a relatively
low oxygen-content atmosphere, and then in a higher oxygen-content
atmosphere. The improvement lies in using a rotary kiln, which is
continuously fed MnCO3, and in providing a first, low oxygen region, and a
second, downstream, higher oxygen region. The higher oxygen content is
provided by a pipe that delivers oxygen to the second region. The Mn2O3
product is said to be useful for the manufacture of lithium-manganese
complex oxide positive plate materials for lithium secondary electrical cells.

2 Application 10/489,046, Method of Producing Manganese Oxide, entered
the National Stage on 5 March 2004, based on a PCT application filed
15 January 2003, and claiming the benefit of a Japanese application filed
8 April 2002. The specification is referred to as the “046 Specification,” and
is cited as “Spec.” The real party in interest is listed as Nikko Materials Co.,
Ltd. (Appeal Brief, filed 21 April 2008 (“Br.”), 2.)
3 Due to irregularities in the reporting of the inventor’s names, both in the
record of the USPTO (supra, n.1) and on the principal prior art reference
(infra, n.7),we refer to the inventors as “Appellants” throughout.
4 Office action mailed 8 January 2008 (“Final Rejection”; cited as “FR”).
2
Appeal 2009-003707
Application 10/489,046

Representative Claim 6 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
6. A method of continuously producing a high-density
manganese oxide composed of fine particles, comprising the
steps of:
providing a rotary kiln having an inside atmospheric
temperature of from 400-600°C;
introducing manganese carbonate into the rotary kiln
through a material charging port;
conducting a first roasting treatment of the manganese
carbonate in the rotary kiln
in the presence of a low oxidizing atmospheric
zone to form a mixture of Mn2O3 and Mn3O4; and
conducting a second roasting treatment of the mixture of
Mn2O3 and Mn3O4 in the rotary kiln
at a location downstream from the first roasting
treatment
in the presence of an atmosphere containing a
higher concentration of oxygen than the low
oxidizing atmosphere and
formed by an oxygen-containing gas supply pipe
inserted into the rotary kiln for supplying an
oxygen-containing gas at the downstream location
to form the high-density manganese oxide in a single phase of
Mn2O3.
(Br., Claims App.; paragraphing and indentation added.)
3
Appeal 2009-003707
Application 10/489,046

The Examiner has maintained the following ground of rejection:5,6
A. Claims 2-4, 6, and 7 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Yoshio,7 Remmey,8 and Shimizu.9
The Examiner finds that Yoshio teaches a two-stage roasting process
in which MnCO3 is converted to Mn2O3 in a static furnace in a first low
oxygen-content atmosphere stage, followed a second, higher oxygen-content
stage. The differences between the process taught by Yoshio and the
process claimed by Appellants is in the use of a rotary kiln, and in the
introduction of oxygen to the second stage by a pipe. The Examiner relies
on Remmey as evidence that a person having ordinary skill in the art would
have used a rotary kiln in place of the static kiln used by Yoshio for the heat
treatment of the materials. The Examiner relies on Shimizu as evidence that
a person having ordinary skill in the art would have used a pipe to deliver a
richer oxygen atmosphere to the desired place of reaction.

5 Examiner’s Answer mailed 11 July 2008. (“Ans.”).
6 The Examiner has withdrawn an obviousness rejection based on Yoshio,
Hart (U.S. Patent 4,059,391), and Shimizu. (Ans. 2.)
7 Yoshio Kajitani and Hiroshi Tazaki, Lithium-Manganese Composite
Oxide, JP 2000 281349 (2000) Comparison of the inventors listed on
Japanese language original with the Appellants indicates that Yoshio
Kajitani is Yoshio Kajiya, and Hiroshi Tazaki is Hiroshi Tasaki, the
differences arising from different readings of the Japanese characters and
variations in transliteration only. Rather than refer to this reference by the
surname of the first author, we continue the practice established during
prosecution.
8 G. Bickley Remmey, Jr., Firing Ceramics, 136 (1994).
9 Takashi Shimizu, Method for Forming Electrode on Semiconductor, U.S.
Patent 5,610,097 (1997).
4
Appeal 2009-003707
Application 10/489,046

The dispositive issues raised by Appellants are:
whether there is motivation to combine the references; and
whether unexpected results rebut a case of prima facie
obviousness.
Appellants do not raise substantive arguments with respect to any
identified claim other than claim 6. All claims thus stand or fall with
claim 6.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Appellants admit (Br. 4) that Yoshio teaches a two-step method of
producing high density, finely powdered manganese oxide in which
manganese carbonate is heated in a low oxygen content atmosphere, and
then in a higher oxygen content atmosphere. The critical difference,
according to Appellants, between the process taught by Yoshio and the
claimed process, is that the claimed process requires a rotary kiln, which
results in a continuous process having higher conversion efficiency than the
static batch process used by Yoshio. (Br., para. bridging 4-5; 7.) Moreover,
Appellants urge that Yoshio does not provide a reason to introduce a higher
oxygen-content atmosphere to a particular region of the reactor via a pipe.
(Id. at 6, 8.) In order to establish a prima facie case of obviousness,
Appellants argue, these deficiencies must be made up by Remmey or by
Shimizu. (Id. at 7.)
5
Appeal 2009-003707
Application 10/489,046

Appellants argue that Remmey teaches the use of rotary kilns for
calcining, not for roasting, and that “there is a difference between the
calcining performed in the rotary kilns shown in Remmey and the roasting
required by Yoshio.” (Br. 8.) Appellants do not, however, explain what the
differences are, and why such differences would have rendered the use of a
rotary kiln non-obvious for a roasting process. Remmey teaches that
calcining involves heating minerals to a temperature below their melting
point in order to drive off volatile materials, or to oxidize or reduce the
minerals. (Remmey 136.) The process taught by Yoshio (and the process
claimed by Appellants) involves the oxidation of manganese carbonate to
manganese oxides. We are not persuaded that Appellants have shown
harmful error in the Examiner’s conclusion that it would have been obvious
to conduct the roasting process taught by Yoshio in a rotary kiln. Based on
the level of skill suggested by the references of record, we find that the
advantages of a continuous process over a batch process, and of a reactor
that provides at least two distinct temperature zones (Remmey
illustration #104 shows a cold zone, an intermediate zone, and a hot zone)
would have been evident to a person of average inventiveness. Moreover,
Appellants have not indicated what negative teachings in either Yoshio or
Remmey, if any, would have dissuaded such a person from the combination.
Appellants argue that Shimizu provides nothing relevant to the
technology of the claimed two-step roasting process. (Br. 8.) This objection
misses the point that Yoshio provides the motivation to provide different
oxidizing atmospheres as well as different temperatures for the two stages of
the reaction. As already noted, Remmey provides two temperature regions.
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Appeal 2009-003707
Application 10/489,046

As the Examiner found, Shimizu’s teaching of providing an oxidizing gas
via a pipe to a desired part of a reactor would have suggested to a person
having ordinary skill in the art that a pipe could be used to provide a more
oxygenated atmosphere to the desired hotter, downstream reaction site
provided by the rotary kiln. Appellants have not shown harmful error in this
conclusion.
Finally, Appellants urge that Table 1 of the 046 Specification shows
unexpected results—namely, that manganese oxide obtained from a rotary
kiln operated at 650°C produced unsatisfactory, sintered MnO2 particles
having undesirable size, shape, and yield compared to manganese oxide
obtained from a rotary kiln operated at a temperature within the claimed
range. (Br. 8-9.) In light of the teachings of Yoshio regarding the desired
properties of the product of the second heat treatment (fine-grain, high-
density, spherical Mn2O3: Yoshio 9, last 8 lines of ¶ [0012]) and the
teachings of relatively wide temperature ranges for the two steps (id. at 11,
¶ [0014], item 6)), we are confident that persons having ordinary skill in the
art would have recognized that oxygen content, temperature, and duration of
treatment would be result-effective variables that should be monitored and
altered to achieve the desired Mn2O3 properties when adapting the Yoshio
batch process to a continuous process. Put another way, Appellants have not
shown that the adverse results at 650°C would have been unavoidable, and
that the positive results would thus have been unexpected.
We conclude that Appellants have not shown harmful error in the
Examiner’s rejections. Accordingly, we AFFIRM the decision of the
Examiner.
7
Appeal 2009-003707
Application 10/489,046

D. Order
We AFFIRM the rejection of claims 2-4, 6, and 7 under 35 U.S.C.
§ 103(a) in view of the combined teachings of Yoshio, Remmey, and
Shimizu.
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
tc

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