Ex Parte Nakahara et al

Patent Trial and Appeal Board

Feb 24, 2016

10597518 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/597,518 0712712006
27667 7590
HA YES SOLOWAY P,C
4640 E. Skyline Drive
TUCSON, AZ 85718
02/26/2016
FIRST NAMED INVENTOR
Kentaro Nakahara
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.
NEC 04P315 2255
EXAMINER
GILLIAM, BARBARA LEE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
admin@hayes-soloway.com
nsoloway@hayes-soloway.com
sbronson@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENTARO NAKAHARA, JIRO IRIYAMA,
SHIGEYUKI IWASA, MASAHIRO SUGURO,
and MASAHARU SATOH
Appeal2014-004746
Application 10/597 ,518
Technology Center 1700
Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify NEC Corporation as the real party in interest. App.
Br. 2.
Appeal2014-004746
Application 10/597 ,518
The Invention
Appellants' invention relates to a secondary electrochemical cell
comprising a cathode containing a nitroxyl polymer and a lithium or lithium
alloy anode, wherein the cathode is in direct contact with the anode. Spec.
Abstract. Claim 1, the sole independent claim, is representative of the
claims on appeal, and is reproduced below from the Claims Appendix to the
Appeal Brief:
21. A secondary electrochemical cell comprising a cathode
and an anode, wherein:
the cathode comprises a cathode layer comprising nitroxyl
polymer, and a cathode collector;
the nitroxyl polymer has a nitroxyl cation partial structure
represented by the following chemical formula (I) in oxidation
state and has a nitroxyl radical partial structure represented by
the following chemical formula (II) in reduction state,
employing a reaction for transferring an electron between the
two states represented by the following equation (B) as an
electrode reaction of the cathode:
(l)
the anode comprises a lithium or lithium alloy as an anode
active material;
the cathode layer is impregnated with an electrolyte having an
electrolyte solution comprising a solvent and an electrolyte salt
dissolved in the solvent the cathode layer being in direct contact
with a surface of the anode; and
the nitroxyl polymer is applied onto the cathode collector and is
in direct contact with the surface of the anode.
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Appeal2014-004746
Application 10/597 ,518
Mc Manis
F arahmandi
Inoue
Nanjundiah
Nakahara
The References
us 4,632,889
us 5, 777 ,428
us 6,090,506
us 6,627,252
JP 2002-304996
The Rejections
Dec. 30, 1986
July7, 1998
July 18, 2000
Sept. 30, 2003
Oct. 18, 2002
1. Claims 1 and 3-12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Nakahara;
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nakahara and McManis;
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nakahara and Inoue;
4. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakahara and Farahmandi; and
5. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakahara and Nanjundiah.
OPINION
We reverse the Examiner's rejection of claims 1 and 3-12 under
35 U.S.C. § 102(b ), and reverse the Examiner's rejections of claims 2--4
under 35 U.S.C. § 103(a).
Rejection of claims 1 and 3-12 under 35 USC§ 102(b)
Because we reverse the rejection, we need only address independent
claim 1. As is relevant to the issues on appeal, the Examiner finds that
Nakahara discloses the use of a solid polymer electrolyte including a solvent
and electrolyte salt made into a gel without the use of a separator. Final
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Appeal2014-004746
Application 10/597 ,518
Action 3 (citing Nakahara i1i147, 48, 50). The Examiner further finds that
Nakahara's gel solid electrolyte structure places the cathode layer "in direct
contact" with the anode. Id.
Anticipation requires that every limitation of the claim in issue be
disclosed, either explicitly or inherently, in a single prior art reference. In re
NTP, Inc., 654 F.3d 1279, 1302 (Fed. Cir. 2011). It is the Examiner's
burden to establish a prima facie case of anticipation. In re King, 801 F .2d
1324, 1326-27 (Fed. Cir. 1986).
Appellants argue the rejection should be reversed because Nakahara
fails to disclose that the cathode is in direct contact with a surface of the
anode. App. Br. 1 O; Reply Br. 5---6. In particular, Appellants argue that
Nakahara's solid electrolyte is located between the cathode layer and the
anode layer, thereby eliminating the need for a separator. App. Br. 10
(citing Nakahara i-fi-143, 50); see Reply Br. 5.
Our analysis begins, as it must, with the language of the claims.
Oakley, Inc. v. Sunglass Hut Int'!, 316 F.3d 1331, 1339 (Fed. Cir. 2003)
(explaining that a section 103(a) analysis requires comparing the properly
construed claims to the prior art). It is well established that "the PTO must
give claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee." Id.
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Appeal2014-004746
Application 10/597 ,518
Claim l recites that the cathode layer is "in direct contact with a
surface of the anode," and "the nitroxyl polymer is applied onto the cathode
collector and is in direct contact with the surface of the anode." App. Br. 13
(Claims App'x). The plain language of claim 1, therefore, requires direct
contact of the cathode layer and the nitroxyl polymer with a surface of the
anode, i.e., contact of the layer/nitroxyl polymer and the surface with no
intervening structure. The plain language is supported by the Specification.
See, e.g., Spec. 6:19--7:7, 18:20-21, Fig. 1.
The Examiner maintains that Nakahara's solid gel electrolyte
"provides the same essential structure [as Appellants' recited electrode] of
the presence of an electrolyte that is impregnated in the electrode without a
separator." Ans. 6. Nakahara, however, describes impregnating the
electrode in an embodiment where the separator is used between the anode
and cathode, Nakahara i-fi-157-58, 66, 70, and the Examiner does not explain
adequately how such a disclosure applies to Nakahara's solid gel electrolyte.
Nor does the Examiner explain sufficiently how the solid electrolyte, which
appears to be used in place of the separator (i.e., as an intervening structure),
otherwise permits direct contact between the cathode layer/nitroxyl polymer
and a surface of the anode. We, therefore, find that the Examiner has not
met the burden of establishing a prima facie case of anticipation.
Accordingly, we reverse the rejection of claims 1 and 3-12 under 35 U.S.C.
§ 102(b).
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Appeal2014-004746
Application 10/597 ,518
Rejections of claims 2-4 under 35 US.C. § 103(a)
The Examiner rejects claims 2--4 as obvious over several prior art
combinations, all of which include Nakahara. 2 Final Act. 3---6. Claims 2--4
depend from claim 1 and, therefore, require "direct contact" between the
cathode layer/nitroxyl polymer and a surface of the anode. The Examiner
does not rely on the additional references to cure the above-identified
deficiency in Nakahara's disclosure. Accordingly, we also reverse the
Examiner's rejections of claims 2--4 under 35 U.S.C. § 103(a).
DECISION/ORDER
The Examiner's rejection of claims 1 and 3-12 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejections of claims 2--4 under 35 U.S.C. § 103(a) are
reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
2 The Examiner is reminded to avoid cumulative rejections and to rely on the
best references in rejecting claims. See 37 C.F.R. § 1.104(c)(2) (2013) ("In
rejecting claims for want of novelty or for obviousness, the examiner must
cite the best references at his or her command."); MPEP § 706.02(I).
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