Ex Parte KOSE et al

Patent Trial and Appeal Board

May 30, 2018

13905636 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/905,636 05/30/2013 OsamuKOSE
22850 7590 06/01/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
416797US99 5253
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
06/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMU KOSE, YASUO MATSUKI, and
TOMOTAKA SHINODA
Appeal2017-007292
Application 13/905,636
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-9, 11, 14--17, 19, and 21-23. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In explaining our Decision, we refer to the Specification filed May 30,
2013 ("Spec."); Final Office Action docketed April 1, 2016 ("Final Act.");
Advisory Action docketed August 3, 2016 ("Adv. Act."); Appeal Brief filed
October 25, 2016 ("Appeal Br."); Examiner's Answer docketed February
10, 2017 ("Ans."); and Reply Brief filed April 7, 2017 ("Reply Br.").
2 Appellant is the Applicant, JSR Corporation, which is identified as the real
party in interest. Appeal Br. 1.
Appeal2017-007292
Application 13/905,636
The Claimed Invention
Appellant's disclosure relates to a binder composition for an electrode
of an electric storage device. Spec. 1. In particular, according to the
Specification, the claimed invention relates to a binder composition for an
electrode that provides an electric storage device having a large
charge/discharge capacity and a low degree of capacity degradation due to
repetition of a charge/discharge cycle. Id. at 1, 3--4, 59 (Abstract).
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix of the Appeal Brief (Appeal
Br. 12) (key disputed claim language italicized and bolded):
1. A binder composition comprising:
(A) at least one polymer selected from the group consisting
of a polyamic acid and an imidized polymer of a polyamic acid
having an imidization rate of 50% or less; and
(B) water,
wherein a ratio Ma/Mb of a mass of the polymer (A), Ma,
to a mass of the water (B), Mb, is in a range of 500 to 5,000.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Choi et al.,
(hereinafter "Choi")
Nakayama 3
US 2009/0087748 Al Apr. 2, 2009
JP 2012-8543 A Jan. 12,2012
3 The Examiner refers and cites to Nakayama et al. (US 2013/0171520 Al,
published July 4, 2013) ("Nakayama '520") as the English language
translation of Nakayama. Ans. 2; Final Act. 3--4.
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Application 13/905,636
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1-9, 11, 14--17, 19, and 21-23 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Nakayama
("Rejection 1 "). Ans. 2; Final Act. 3.
2. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Nakayama in view of Choi ("Rejection 2"). Ans. 2; Final
Act. 4.
OPINION
Reiection 1
The Examiner determines that Nakayama discloses a binder
composition for a battery electrode satisfying all of the limitations of claim 1
and thus, concludes that the reference would have rendered claim 1 obvious.
Ans. 2. In particular, regarding the "ratio Ma/Mb of a mass of the polymer
(A), Ma, to a mass of the water (B), Mb" recitation of claim 1, the Examiner
finds that Nakayama teaches adjusting the amount of components, including
polyamic acid and water, in Examples such as Al-A13 and also teaches
drying the binder composition to obtain a binder resin to be mixed with
electrode active material. Id. ( citing Nakayama '520 ,r,r 29, 32, 35, 64, 66,
174, 205, 231-236 (Examples Al-A13)).
Based on Nakayama's teachings, the Examiner concludes that
it would have been obvious for the person of ordinary skill[] in
the art at the time the invention was made to adjust the amount
of components to the desired range disclosed by the Applicant
by adjusting the mixing ratios and drying temperature and
duration as "[D]iscovery of an optimum value of a result
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Application 13/905,636
effective variable in a known process is ordinarily within the
skill of the art."
Id. at 2 (quoting In re Boesch, 617 F.2d 272,276 (CCPA 1980)).
Appellant argues that the Examiner's rejection of claim 1 should be
reversed because the cited art does not teach or suggest "wherein a ratio
Ma/Mb of a mass of the polymer (A), Ma, to a mass of the water (B), Mb, is
in a range of 500 to 5,000," as recited in the claim. Appeal Br. 4--8; see also
Reply Br. 1-2.
Appellant's argument is persuasive because the Examiner has not
established by a preponderance of the evidence that Nakayama teaches or
suggests "wherein a ratio Ma/Mb of a mass of the polymer (A), Ma, to a
mass of the water (B), Mb, is in a range of 500 to 5,000," as required by
claim 1. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that
the examiner bears the initial burden of establishing a prima facie case of
obviousness.).
The Examiner does not direct us to sufficient evidence that Nakayama
teaches or suggests this limitation. The portions of Nakayama upon which
the Examiner relies do not teach or suggest a mass ratio of polymer
(polyamic acid) to water "in a range of 500 to 5,000," as claimed. See
Nakayama ,r,r 29, 32, 35, 64, 66, 174, 205, 231-236 (Examples Al-A13).
Rather, as Appellant correctly points out (Appeal Br. 4), paragraph 128 of
Nakayama actually teaches that the polyamic acid component of the
precursor solution is between 5 wt.% to 45 wt.%, which corresponds to a
mass ratio ofpolyamic acid to water in a range of 0.05 to 0.8 and thus,
neither overlaps nor comes close to the claimed range.
Moreover, on the record before us, we are not persuaded that the
Examiner identifies evidence or provides sufficient reasoning to support a
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Application 13/905,636
finding that one of ordinary skill in the art would have had reason to modify
Nakayama's precursor solution to arrive at the claimed composition. As
Appellant notes (Appeal Br. 5), the Examiner does not identify an adequate
reason or motivation for one of ordinary skill in the art to modify the
amounts of polyamic acid and water in Nakayama's precursor solutions to
arrive at a composition having a mass ratio falling within the claimed range
of 500 to 5,000. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(requiring "reasoning with some rational underpinning to support the legal
conclusion of obviousness") (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ).
To the contrary, Nakayama suggests that the relative amounts of the
polyamic acid and water components should not be modified and, in fact,
explicitly teaches that the amount of polyamic acid in the composition
should not be less than 5 wt.% or greater than 45 wt.%. See Nakayama ,r
128. In particular, Nakayama teaches that:
Id.
When the solid content is lower than 5 wt%, the productivity
and the handling in use may be reduced. When the solid content
is higher than 45 wt%, the solution may lose the fluidity.
The Examiner's discussion at pages 2--4 of the Answer and conclusion
that it would have been obvious for a person of ordinary skill to adjust the
amount of components to the desired range are not persuasive because they
are conclusory and, without more, do not sufficiently address Appellant's
principal argument that Nakayama does not teach or suggest the limitation
"wherein a ratio Ma/Mb of a mass of the polymer (A), Ma, to a mass of the
water (B), Mb, is in a range of 500 to 5,000," as claimed. Kahn, 441 F.3d at
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Application 13/905,636
988 (holding "rejections on obviousness grounds cannot be sustained by
mere conclusory statements").
We do not find the Examiner's assertion that "discovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art" (Ans. 2) for the reasons provided by Appellant at
pages 2--4 of the Appeal Brief and pages 1-2 of the Reply Brief. In
particular, we concur with Appellant that the Examiner has failed to
establish by a preponderance of the evidence that the polyamic acid/water
mass ratio of Nakayama's precursor solution is a result-effective variable.
In re Antoine, 559 F .2d 618, 620 (CCP A 1977) (reversing obviousness
rejection where "the parameter optimized was not recognized to be a result-
effective variable").
We, therefore, cannot sustain the Examiner's rejection because the
Examiner has failed to establish that Nakayama teaches or renders obvious
all of the limitations of claim 1. Because claims 2-9, 11, 14--1 7, 19, and 21-
23 each depend from claim 1, we also cannot sustain the Examiner's
rejection of these claims.
Accordingly, we reverse the Examiner's rejection of claims 1-9, 11,
14--17, 19, and 21-23 under 35 U.S.C. § 103(a) as obvious over Nakayama.
Reiection 2
Because the foregoing deficiencies in the Examiner's findings and
conclusions regarding the Nakayama reference (Rejection 1, stated above)
are not remedied by the Examiner's findings regarding the additional
reference or combination of references cited in support of the second ground
of rejection, we also reverse the Examiner's rejection of claim 9 under
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Application 13/905,636
35 U.S.C. § 103(a) as obvious over the combination of Nakayama and Choi
(Rejection 2, stated above).
DECISION
The Examiner's rejections of claims 1-9, 11, 14--17, 19, and 21-23
are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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