14402757 (P.T.A.B. Feb. 27, 2019)

Ex Parte Nakano et al

Patent Trial and Appeal BoardFeb 27, 2019

14402757 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/402,757 11/21/2014 Tomohiro Nakano 22852 7590 03/01/2019 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK A VENUE, NW WASHINGTON, DC 20001-4413 UNITED ST A TES OF AMERICA 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. l 1139.0167-00000 7728 EXAMINER LYNCH, VICTORIA HOM ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 03/01/2019 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOHIRO NAKANO, SATOSHI GOTO, TOMOHIDE SUMI, and HIDEKI SANO Appeal2018---004764 Application 14/402,757 Technology Center 1700 Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and WESLEY B. DERRICK, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1--4, 11, and 13-15. (Appeal Br. 6.) We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We REVERSE. 1 This Decision includes citations to the following documents: Specification filed November 21, 2014 ("Spec."); Final Office Action dated April 11, 2017 ("Final Act."); Appeal Brief filed December 6, 2017 ("Appeal Br."); Examiner's Answer dated February 7, 2018 ("Ans."); and Reply Brief filed April 5, 2018 ("Reply Br."). 2 Appellant is the Applicant Toyota Jidosha Kabushiki Kaisha, which is also identified as the real party in interest. (Appeal Br. 3.) Appeal2018---004764 Application 14/402,757 THE INVENTION Appellant states that the invention relates to a nonaqueous electrolyte secondary battery. (Spec. ,r 1.) In particular, the invention relates to a secondary battery having high battery performance in durability and output characteristics over a broad range of temperature environments. (Spec. ,r 6.) The secondary battery contains a boron atom-containing oxalate complex compound that forms a coating containing boron atoms on the surface of the negative electrode active material. (Spec. ,r 8.) The ratio on the surface of the negative electrode active material between an amount BM (Âµg/cm2) of the boron atom, as measured based on inductively coupled plasma-atomic emission spectroscopy (ICP-AES), and an intensity BA for a tricoordinate boron (B) atom, as measured based on x-ray absorption fine structure (XAFS) analysis, is 0.5 :S BAIBM :S 1.0. (Id.) The Specification describes that a coating having this ratio is obtained by controlling the initial charging rate of the battery to at least 1.5C and not more than 5C, a rate that is higher than the charging rates of O .1 C to 1 C conventionally applied in the prior art. 3 (Spec. ,r,r 14, 66.) The Specification also describes a two-step charging process, with a lower charging rate applied in the first charging step and a second charging step in which the charging rate is increased to a value that is at least 1.5-times, but not more than 3-times the first charging process. (Spec. ,r,r 16, 67, 68.) 3 The Specification states that "IC denotes the current value capable of charging to the battery capacity (Ah) predicted from the theoretical capacity in 1 hour. For example, 1 C =24A when the battery capacity is 24 Ah." (Spec. ,r 14.) 2 Appeal2018---004764 Application 14/402,757 Claim 1, the only independent claim on appeal, is representative and reproduced below from the Claims Appendix to the Appeal Brief ( emphasis added): 1. A nonaqueous electrolyte secondary battery in which an electrode assembly in which a positive electrode having a positive electrode active material and a negative electrode having a negative electrode active material are disposed facing each other, a nonaqueous electrolyte, and a boron (B) atom-containing oxalato complex compound are housed in a battery case, wherein a coat containing boron (B) atoms that originate from the oxalato complex compound is formed on the surface of the negative electrode active material, and a ratio on the swface of the negative electrode active material between an amount BM (Âµglcm 2) of the boron atom, as measured based on inductively coupled plasma-atomic emission spectroscopy (ICP-AES), and an intensity BA/or a tricoordinate boron (B) atom, as measured based on x- ray absorption fine structure (XAFS) analysis, is 0. 5 :SBA/BM :S 1. 0. (Appeal Br. 17, Claims Appendix.) REJECTIONS The Examiner rejected claims 1--4, 11, and 13-15 under 35 U.S.C. Â§ 103 as obvious over Xu et al. (US 2006/0236528 Al, published on October 26, 2006, "Xu") as evidenced by Barker et al. (US 5,643,695, issued July 1, 1997, "Barker"). (Final Act. 3---6; Ans. 3.) We limit our discussion to claim 1, which is sufficient for disposition of this appeal. 3 Appeal2018---004764 Application 14/402,757 ISSUE The Examiner found, inter alia, that Xu discloses a nonaqueous electrolyte battery having the components recited in claim 1, but that Xu is silent as to the 0.5 :SBA/BM :S 1.0 relationship recited in the claim. (Final Act. 3--4.) The Examiner found that Xu discloses initial charging and discharging of the battery, which is followed by charging to 5 volts at a 3C rate. (Final Act. 4, citing Xu ,r,r 14, 28, and 29.) The Examiner stated "[ t ]herefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to try choosing from a finite number of identified solutions to use the charging process as disclosed by the Xu reference in order to protect the battery." (Final Act. 4.) The Examiner also found the Xu discloses a two-stage charging process, which includes a first charging to 4.2 volts at a rate of 0.3C at constant current followed by an overcharge test performed by charging to 5 volts at a 3C rate, which is akin to the two stage process described in the Specification. (Ans. 4, citing Xu ,r,r 28, 29.) The Examiner stated that the Specification does not present comparative examples relative to Xu, the closest prior art. (Ans. 4---6.) The Examiner relied on Barker solely for the purpose of providing evidence that certain characteristics of electrodes were known in the art at the time of the invention. (Final Act. 5.) Appellant argues that Xu's initial charging rate of 0.3C is consistent with the prior art ranges disclosed in the present Specification and that the 3C rate is the rate of an overcharge test, and not the initial charging rate after the construction of the battery, the latter of which the present Specification discloses is controlled to arrive at the 0.5 :SBA/BM :S 1.0 relationship recited in claim 1. (Appeal Br. 8-10, citing Spec. ,r,r 65, 66, 83; Xu, ,r,r 14, 28, 29.) 4 Appeal2018---004764 Application 14/402,757 Appellant argues, with reference to examples in the Specification, that the Examiner's reliance on the initial charging/overcharge test rates disclosed in Xu is not sufficient to support any alleged inherency or obviousness of the 0.5 :S B~BM :S 1.0 relationship in claim 1. (Appeal Br. 10-12; Reply Br. 7- 11.) The dispositive issue is: Has Appellant identified reversible error in the Examiner's position that the 0.5 :S B~BM :S 1.0 relationship recited in claim 1 would have been obvious in view of Xu? DISCUSSION We are persuaded by Appellant's argument that the Examiner reversibly erred in determining that the 0.5 :SBA/BM :S 1.0 relationship recited in claim 1 would have been obvious in view of Xu. Even if we were to accept the Examiner's position that the initial charging step plus the overcharging step disclosed in Xu is akin to the two-step charging process described in the Specification, the Examiner has not presented sufficient reasoning to establish a prima facie case of obviousness. In this regard, we observe, that there is no dispute that Xu does not recognize the B~BM relationship as a property to be adjusted. (Appeal Br. 9, 13; Final Act. 3--4.) As Appellant explains, Examples 1 and 2 in the Specification provide evidence that at initial charging rates of 1.0 C and below, the BA/BM ratio is below the lower limit of 0.5 recited in claim 1. (Appeal Br. 11-12, citing Spec. Tables 1 and 2; see also Reply Br. 7-11.) In addition, Appellant points out that Example 7, which discloses a two-step initial charging method charging at 0.2C in a first step and then at 2C in a second step results in a BA/BM relationship below 0.5. (Reply Br. 10-11.) This is consistent 5 Appeal2018---004764 Application 14/402,757 with the Specification's description that the charging rate applied in the second charging step should not be more than 3-times the rate in the first charging process. (Spec. ,r,r 16, 67, 68.) Thus, the Specification provides evidence that conventional charging rates of less than 1.0 C, do not satisfy the B AIBM relationship recited in the claims, and also provides evidence that even when combined with a second step having a higher charging rate, not all of such lower initial charging rates result in the B AiBM relationship recited in the claims. Accordingly, based on this evidence of record, we are of the view that the Examiner did not have a reasonable basis to support the position that the BA/BM relationship would have been obvious in view of the teachings in Xu. The Examiner bears the initial burden, on review of prior art or on any other ground, of presenting a prima facie case ofunpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). As a result, the Examiner's position that the comparative examples in the Specification do not reflect the disclosure in Xu is moot. DECISION We reverse the Examiner's decision rejecting claims 1--4, 11, and 13- 15. REVERSED 6