Ex Parte Kanzaki et al

Board of Patent Appeals and Interferences

Nov 16, 2011

10416025 (B.P.A.I. Nov. 16, 2011)

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.
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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.
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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
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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