Ex Parte Kanzaki et alDownload PDFBoard of Patent Appeals and InterferencesNov 16, 201110416025 (B.P.A.I. Nov. 16, 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. 10/416,025 05/13/2003 Atsuhiro Kanzaki 030545 7601 23850 7590 11/16/2011 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER LEWIS, BEN ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 11/16/2011 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 ATSUHIRO KANZAKI, TAKAO SUZUKI, and KATSUYA NAKAMURA __________ Appeal 2010-001372 Application 10/416,025 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and TERRY J. OWENS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-001372 Application 10/416,025 2 The subject matter on appeal is directed to a slurry composition for a positive electrode of a lithium ion secondary battery. The slurry composition comprises, inter alia, an active material for a positive electrode and two polymers, i.e., polymer A and polymer B. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A slurry composition for a positive electrode for a lithium ion secondary battery, comprising: a polymer A wherein a HOMO (Highest Occupied Molecular Orbital Energy) value by a semiempirical method molecular orbital calculation is -13.5eV to-10eV, a glass transition temperature is -80°C to 0°C and a content of ethylene repeating units is 35 mol% to 90 mol%; a polymer B wherein a HOMO value by a semiempirical method molecular orbital calculation is -13.5eV to -10eV, a glass transition temperature is -80°C to 0°C, and a gel content is 50 wt% or more; an active material for a positive electrode; a conductivity adding agent; and a liquid medium C in which the polymer A dissolves but the polymer B does not dissolve. App. Br., Claims Appendix.1 The Appellants seek review of the following rejections: (1) the rejection of claims 1-10 and 13-17 under 35 U.S.C. § 103(a) as unpatentable over the combination of Yamamoto2 and Goto3; and 1 Appeal Brief dated April 13, 2009. 2 WO 00/45452 published August 3, 2000. The Examiner relies on US 6,756,153 B1 issued June 29, 2004, as evidence of the disclosure of WO 00/45452. The Appellants do not object. Therefore, we will also rely on US 6,756,153 B1 as evidence of the WO 00/45452 disclosure in this Decision on Appeal. Appeal 2010-001372 Application 10/416,025 3 (2) the rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Yamamoto, Goto, and Terahara.4 B. ISSUE Did the Examiner reversibly err in concluding that it would have been obvious to one of ordinary skill in the art to use a polymer disclosed in Goto in the binder composition of Yamamoto to form a positive electrode, wherein the polymer disclosed in Goto is said to correspond to polymer A recited in claim 1? C. DISCUSSION There is no dispute that Yamamoto discloses a binder composition for a positive electrode of a lithium ion secondary battery comprising two polymers, one of which does not dissolve in an organic liquid medium and the other of which dissolves in the organic liquid medium. Ans. 45; Yamamoto 13:4-8. The Examiner finds that the polymer which does not dissolve in the organic medium satisfies the limitations of polymer B recited in claim 1 but does not find that “the other” polymer (i.e., the polymer which dissolves in the organic medium) satisfies the limitations of polymer A recited in claim 1. Ans. 5. Nonetheless, the Examiner finds that Goto discloses a negative electrode wherein a polymer satisfying the limitations of polymer A is used as a binder. Ans. 5. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to use the polymer of Goto in the binder composition of Yamamoto because Goto teaches that the disclosed polymer imparts superior strength to an electrode. Ans. 5-6. Moreover, relying on In re Kerkhoven, 626 3 US 6,436,573 B1 issued August 20, 2002. 4 US 6,379,846 B1 issued April 30, 2002. 5 Examiner’s Answer dated June 24, 2009. Appeal 2010-001372 Application 10/416,025 4 F.2d 846 (CCPA 1980), the Examiner concludes that it would have been obvious to combine the polymers of Yamamoto and Goto because “[i]t is prima facie obvious to combine two compositions, each which is taught by the prior art to be useful for the same purpose, in[ ]order to form a third composition which is to be used for the very same purpose.” Ans. 6. The Appellants argue that it would not have been obvious to use the polymer of Goto, which is used to form a negative electrode, as a binder for the positive electrode of Yamamoto because “the electrical properties required for positive and negative electrodes are different from each other.” App. Br. 12. The Examiner contends that “[t]he binder of Goto . . . is inert with respect to the electrochemical reactions that take place in the electrode therefore the binder of Goto . . . would perform the same binding function in a positive electrode of Yamamoto . . . .” Ans. 15. The Examiner does not direct us to any evidence that supports this contention. In response, the Appellants argue that “inert with respect to the negative electrode” is different from “inert with respect to the positive electrode.” In particular, the Appellants contend that reduction resistance is required for the negative electrode whereas oxidation resistance is required for the positive electrode. The Appellants contend that Goto “merely teaches that [the] binder disclosed therein is inert for the negative electrode reaction.” App. Br. 13; see also Goto 5:42-49 (using a different binder (i.e., polytetrafluoroethylene) for the positive electrode). For at least this reason, the Appellants argue that the Examiner’s conclusion of obviousness is not supported by the record on appeal. The Examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). In this case, the Examiner has not directed us to any evidence, in the first instance, which Appeal 2010-001372 Application 10/416,025 5 establishes that one of ordinary skill in the art would have understood that the polymer disclosed in Goto is inert with respect to the electrochemical reactions that take place in the positive electrode of a lithium ion secondary battery. Thus, on this record, the Examiner has failed to demonstrate that one of ordinary skill in the art would have reasonably expected the polymer disclosed in Goto to be a suitable binder for the positive electrode of Yamamoto. For this reason, the § 103(a) rejection of claims 1-10 and 13-17 is reversed. The Examiner does not direct us to any disclosure in Terahara that cures the deficiencies identified above. Therefore, the § 103(a) rejection of claims 11 and 12 is also reversed. D. DECISION The decision of the Examiner is reversed. REVERSED kmm Copy with citationCopy as parenthetical citation