Ex Parte Nakagawa et al

Patent Trial and Appeal Board

Oct 30, 2014

12920186 (P.T.A.B. Oct. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUMIKO NAKAGAWA, MINORU KOTATO,
DAISUKE NODA, and SHINICHI KINOSHITA
____________

Appeal 2013-004045
Application 12/920,186
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and,
CHRISTOPHER M. KAISER, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1–3, 10, 11, 13, 15, and 16. We have jurisdiction under
35 U.S.C. § 6. An oral hearing was held on October 9, 2014.
STATEMENT OF THE CASE
Claims 1 and 7 are representative of the subject matter on appeal and
are set forth below:
Claim 1. A main nonaqueous electrolytic solution, comprising:
an electrolyte; and
a nonaqueous solvent,
App
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lication 12
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04045
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Appeal 2013-004045
Application 12/920,186

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at least one of R8 to R12 is an alkyl group comprising 2-12 carbon
atoms, optionally substituted with a halogen atom;
(C) a third nonaqueous electrolytic solution which comprises (c1)
diphenyl carbonate and (c2) at least one compound selected from the group
consisting of vinylene carbonate, a cyclic carbonate compound comprising a
fluorine atom, a monofluorophosphoric acid salt, and a difluorophosphoric
acid salt,
wherein a proportion of the (c1) diphenyl carbonate to the third
nonaqueous electrolytic solution (C) is 0.001 % by weight or higher but less
than 5% by weight,
wherein a total proportion of the at least one compound (c2) is 0.001-
20% by weight, and
wherein the third nonaqueous solution (C) comprises (c3) ethylene
carbonate and a (c4) dialkyl carbonate, wherein a proportion of the ethylene
carbonate to a sum of the ethylene carbonate (c3) and the dialkyl carbonate
(c4) in the third nonaqueous solution (C) is from 5% by volume to 50% by
volume; and
(D) a fourth nonaqueous electrolytic solution which comprises (d1) at
least one compound selected from the group consisting of a phosphoric acid
ester and carboxylic acid ester, comprising a phenyl group substituted by at
least one alkyl group that is optionally substituted, wherein the at least one
alkyl group by which the phenyl group is substituted comprises 4 or more
carbon atoms.

Claim 7. The solution of claim 1, wherein the first nonaqueous
electrolytic solution (A) is present and further comprises
(a3) a cyclic carbonate selected from the group consisting of ethylene
carbonate and propylene carbonate,
(a4) an asymmetric chain dialkyl carbonate, and
(a5) a symmetric chain dialkyl carbonate.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Abe JP 2000-58115 A Feb. 25, 2000
Onuki et al. US 2005/0118512 A1 June 2, 2005
(hereafter “Onuki”)
Tsujioka JP 2007-173180 A July 5, 2007

Appeal 2013-004045
Application 12/920,186

4
THE REJECTIONS
1. Claims 1–3, 7, 10, 13 and 15 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Onuki.1
2. Claims 11 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abe in view of Tsujioka.
ANALYSIS
Appellants have not presented separate arguments for all of the
rejected claims. Rather, Appellants’ arguments are directed to independent
claims 1, 10, and 15, of which we select claim 1 as representative.
Appellants also argue claim 7 and claim 11. Any claim not separately
argued will stand or fall with its respective independent claim. See
37 C.F.R. § 41.37(c)(1)(vii).

Rejection 1
Appellants argue that the applied art does not disclose a nonaqueous
solvent comprising (A) and/or (C). Appeal Br. 6. Appellants also argue that
Onuki does not show the specific combination of the two compounds (the
two compounds being methyl phenyl carbonate and vinylene carbonate)
recited in claims 1, 10, or 15. Appeal Br. 8. Appellants also argue that

1 On page 3 of the Answer, the Examiner indicates the status of the rejected
claims as being claims 1–3, 10, 11, 13, 15, and 16. On page 4 of the
Answer, the Examiner only lists claims 1, 10, and 15 as being rejected in
Rejection 1, but we believe the Examiner’s intent was to include claims 2, 3,
7, and 13, so we list these claims in Rejection 1 since these claims are
mentioned on pages 4–5 of the Answer in the Examiner’s rejection.
Appeal 2013-004045
Application 12/920,186

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Onuki provides no examples with the specific combination, in the specific
arrangement claimed. Appeal Br. 10.
The Examiner explains that electrolytic solutions (A) and (C) are
claimed in an alternative form, and therefore solution (C) is not required by
the claim language. Ans. 8–9. We agree for the reasons stated by the
Examiner therein.
The Examiner also explains that paragraph [0139] of Onuki teaches
that “[t]hese compounds may be used singly or in combination of two or
more thereof.” As such, the Examiner explains that Onuki therefore teaches
solution (A) based upon the combined teachings of paragraphs [0137] and
[0139]. Ans. 8–9. Appellants reiterate that this is not a teaching of the
specific combination of the two compounds as claimed. Reply Br. 3. We
are not convinced of error by such argument. We realize that picking and
choosing and combining disparate portions of a prior art reference not
related to each other is unsupportive of an anticipation rejection. In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). However, as pointed out by the
Examiner, paragraph [0139] of Onuki clearly teaches that
that “[t]hese compounds may be used singly or in combination of two or
more thereof.” The compounds are the compounds mentioned in preceding
paragraphs, including paragraph [0137]. As such, we are not convinced that
combining the two compounds as explained by the Examiner amounts to
picking and choosing and combining disparate portions of a prior art
reference sufficient to thwart an anticipation rejection.
However, with respect to claim 7, we note that the teachings of
paragraphs [0154]–[0155] relied upon by the Examiner (Ans. 5, 9) in
rejecting claim 7, come after the teachings of paragraph [0139]. The
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Application 12/920,186

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teachings found in paragraph [0139] are applicable to preceding paragraphs
of Onuki, but not to paragraphs that follow it. In this context, we agree with
Appellants that Onuki does not anticipate claim 7. The Examiner’s reliance
upon paragraph [0139] for applying to teachings found thereafter effectively
amounts to picking, choosing, and combining various disclosures not
directly related to each other sufficient to thwart the anticipation rejection.
We thus sustain the above § 102 rejection for claims 1–3, 10, 13, and
15, but we reverse this rejection with respect to claim 7.

Rejection 2
Appellants argue that there is no motivation to modify Abe in view of
Tsujioka for the reasons expressed on pages 14–15 of the Appeal Brief.
Appellants argue that the combination as proposed by the Examiner is “an
invitation to experiment” and that no link has been established between
Abe’s composition and the proposed improvement from the modification.
Appeal Br. 15. However, as explained by the Examiner on page 10 of the
Answer, sufficient motivation does exist to use Tsujioka’s vinylene
carbonate in the composition of Abe for the very purpose taught in Tsujioka
(to provide for an overcharging effect due to formation of a protective coat
on the electrodes). See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
We thus are not persuaded by Appellants’ argument that the inventions of
Abe and Tsujioka are such that the benefit taught in Tsujioka would not be
transferrable to Abe for the reasons stated by the Examiner on page 10 of the
Answer.
Appellants argue that Table 3 of their Specification on page 85 shows
evidence of non-obviousness. Appeal Br. 16–17. Reply Br. 3–4. Evidence
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of unexpected results can be in the form of a direct comparison of the
claimed invention with the closest prior art which is commensurate in scope
with the claims. See, e.g., In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Example 2-1, which is the representative example of Appellants’
nonaqueous electrolytic solution in Table 3, is described on pages 80–81 of
the Specification. Therein, the Specification discloses that in making a
negative electrode, 6 parts by weight of poly(vinylidene fluoride) is mixed
with 94 parts by weight of a natural-graphite powder. N-Methyl-2-
pyrrolidone is added thereto to form the slurry. Table 3 indicates that 1 part
by weight of diphenyl carbonate is used and that 2 parts by weight vinylene
carbonate is used for Example 2-1. Appellants have not convincingly
explained how this example is commensurate in scope with claim 11. We
thus agree with the Examiner’s position that the data is unconvincing
because it is not commensurate in scope with the claims. Ans. 11–12.
We thus sustain Rejection 2.

CONCLUSIONS OF LAW AND DECISION
Rejection 1 is affirmed as to claims 1–3, 10, and 15. We reverse this
rejection as to claim 7.
Rejection 2 is affirmed.
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-IN-PART

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