Ex Parte Nishino et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10664446 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/664,446 09/18/2003 Takatomo Nishino 09792909-5672 4529
26263 7590 09/24/2010
SONNENSCHEIN NATH & ROSENTHAL LLP
P.O. BOX 061080
WACKER DRIVE STATION, WILLIS TOWER
CHICAGO, IL 60606-1080
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/24/2010 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 TAKATOMO NISHINO, HIROAKI TANIZAKI and
HIROSHI INOUE
____________

Appeal 2009-007653
Application 10/664,446
Technology Center 1700
____________

Before SALLY G. LANE, MICHAEL P. TIERNEY, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007653
Application 10/664,446
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-12. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to an anode material for a battery
comprising a base material physically bonded by van der Waals forces to a
carbonaceous material. (Spec. 5, 6.)
Claim 1 is illustrative:
1. An anode material, comprising: a composite material
including a base material physically bonded by van der Waals
forces to a carbonaceous material, the base material including at
least one element selected from the Group 14 elements, except
for carbon (C), the physical bonding of the base material to the
carbonaceous material effected by applying a compressive force
and a shearing force to at least a part of a surface of a base
material when the composite material is formed.

(App. Br. 11, Claims Appendix.)

Appellants appeal the following rejections:
1. Claims 1-12 under 35 U.S.C. § 102(b)/103(a) as being anticipated by,
and alternatively obvious over Kawakami (US 6,432,585 B1, issued Aug.
13, 2002);
2. Claims 1, 3-7, and 9-12 under 35 U.S.C. § 102(b)/103(a) as being
anticipated by, and alternatively obvious over Suzuki (US 6,413,672 B1,
issued July 2, 2002) (hereinafter “Suzuki ‘672”);
3. Claims 1, 4, 5, 7, 10, and 11 under 35 U.S.C. § 102(b)/103(a) as being
anticipated by, and alternatively obvious over Suzuki (US 6,171,725 B1,
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Application 10/664,446
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issued Jan. 9, 2001) (hereinafter “Suzuki ‘725”); and
4. Claims 1-12 under 35 U.S.C. § 102(e)/103(a) as being anticipated by, and
alternatively obvious over Inoue (US 6,506,520 B1, issued Jan. 14,
2003).

APPELLANTS’ CONTENTIONS
Appellants contend that the Examiner improperly interpreted claims 1
and 7 as reciting product-by-process limitations. (App. Br. 7.) Appellants
argue that in the event claims 1 and 7 are interpreted as reciting product-by-
process limitations, the phrase “effected by applying a compressive force
and a shearing force to at least part of a surface of a base material when the
composite is formed” imparts the structural characteristic of physical
bonding which results in improved cycle characteristics in the recited
composite material. (App. Br. 7-8.) Appellants argue that none of the cited
prior art discloses or suggests the improved cycle characteristics as a result
of the recited application of forces. (App. Br. 8-9.)

ISSUES
1. Does the claim phrase “the physical bonding of the base material to
the carbonaceous material effected by applying a compressive force and a
shearing force to at least a part of a surface of a base material when the
composite is formed” qualify as product-by-process language?
2. Do Kawakami, Suzuki ‘672, Suzuki ‘725, and Inoue disclose or
suggest the recited anode material including a base material physically
bonded by van der Waals forces to a carbonaceous material by virtue of the
mixing steps disclosed in each reference?

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PRINCIPLES OF LAW

[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is
based on the product itself. The patentability of a product
does not depend on its method of production. If the product
in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.

In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (internal citations omitted).
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).

FACTUAL FINDINGS
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specifications states “[i]t is considered that when a
compressive force and a shearing force are applied to combine the
carbonaceous material, the base material and the carbonaceous
material are brought nearest to each other, and are physically
bonded by van der Waals forces, thereby the composite material is
formed.” (Spec. 6.)
2. Appellants’ Specification states “the composite material is formed
through applying a compressive force and a shearing force so as to
combine the carbonaceous material with the base material, so
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unlike the case where the base material and the carbonaceous
material are simply mixed . . . the carbonaceous material is firmly
adhered to the base material, thereby a decline in the cycle
characteristics by the base material can be prevented by the
carbonaceous material.” (Spec. 5.)
3. Appellants’ Specification, while describing an apparatus for
applying a compressive force and a shearing force to at least a part
of a surface of a base material when the composite is formed, does
not provide any range of compressive or shearing forces required
to achieve the physical bonding by van der Waals forces. (Spec. 9,
Fig. 1.)
4. Kawakami discloses a battery including an electrode having a
composite material in which a carbonaceous material is
mechanically mixed with a metallic material using a ball mill.
(Col. 1, ll. 8-23; col. 12, l. 56 – col. 13, l. 5.)
5. Suzuki ‘672 discloses a battery including an anode where silicon
powder is uniformly mixed with graphite in a vibration mill. (Col.
8, ll. 33-51.)
6. Suzuki ‘725 discloses a battery including an anode where silicon
powder is roughly milled with graphite by dry milling. (Col. 5, ll.
30-64.)

ANALYSIS
We confine our discussion to appealed claim 1, which contains claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii).
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Issue 1
We agree with the Examiner that claim 1 contains product-by-process
language. As recited in claim 1, the structural characteristic of the
composite material is that the base material is physically bonded to the
carbonaceous material by van der Waals forces. The physical bonding is a
result of the process of applying the compressive force and shearing force to
at least a part of the surface of a base material when the composite material
is formed. (See FF 1.) Therefore, Appellants’ argument that the
characteristic of the physical bonding “exists, that is it is effected, because a
compressive force and a shearing force has been applied” (App. Br. 7) is
consistent with the Examiner’s position that claims recite product-by-
process language. Thus, claim 1 clearly contains product-by-process
language.
Issue 2
Appellants’ arguments that Kawakami, Suzuki ‘672, and Suzuki ‘725
do not disclose the distinctive structural characteristics as claimed are
unconvincing. Although Appellants contend that Kawakami, Suzuki ‘672,
and Suzuki ‘725 fail to disclose application of a compressive force and a
shearing force, Appellants have not addressed the Examiner’s findings that
Kawakami, Suzuki ‘672, and Suzuki ‘725 inherently disclose the recited
physical bonding by virtue of mixing of the base material and carbonaceous
material with application of compressive and shearing forces in a ball mill, a
vibration mill, or by rough milling, respectively. (Ans. 4, 5, and 8; FF 4-6.)
While Appellants contend that conventional composite materials do
not exhibit the improved cycle characteristics obtained as a result of the
recited physical bonding, Appellants’ Specification does not set forth the
required amounts of compressive and shearing forces needed to produce the
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van der Waals forces physically bonding the base material and carbonaceous
material. (FF 3.) In addition, the improved cycle characteristics of the
product are due to the van der Waals forces physically bonding the base
material and carbonaceous material. (FF 1, 2.) Appellants have not
provided sufficient evidence that the mixing techniques disclosed in
Kawakami, Suzuki ‘672, and Suzuki ‘725 correspond to the “simple mixing”
techniques distinguished in the Specification (FF 2) and would be
insufficient to produce the physical bonding recited in the claims or the
improved cycle characteristics argued by Appellants. (See Ans. 7-8.)
Thus, we agree with the Examiner that Kawakami, Suzuki ‘672, and
Suzuki ‘725 anticipate claim 1.
However, the Examiner’s rejection of claims 1-12 over Inoue stands
on different footing. The Examiner stated that “Inoue does not explicitly
state a compressive and/or shearing force is applied to the negative electrode
material,” further stating that the “negative electrode material of the claimed
invention and the negative electrode of the prior art appear to be the same.”
(Ans. 6.) Thus, the Examiner appears to be relying solely on the use of
similar materials in Inoue as basis for the rejection. In this case, the
Examiner fails to provide sufficient evidence to support the position that the
composite material disclosed in Inoue includes a base material physically
bonded by van der Waals forces to a carbonaceous material. Accordingly,
there is insufficient basis to find that the composite material disclosed in
Inoue anticipates the present claims. Furthermore, the Examiner’s rejection
under 35 USC § 103(a) does not provide any further finding or reasoning
that would lead us to conclude that the claimed anode material would have
been obvious over Inoue.
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DECISION
We affirm the Examiner’s § 102(b)/103 rejections of claims 1-12 as
being anticipated by, and alternatively obvious over Kawakami, Suzuki
‘672, and Suzuki ‘725.
We reverse, however, the Examiner’s § 102(e)/103 rejections of
claims 1-12 as being anticipated by, and alternatively obvious over Inoue.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED

rvb

SONNENSCHEIN NATH & ROSENTHAL LLP
P.O. BOX 061080
WACKER DRIVE STATION, SEARS TOWER
CHICAGO, IL 60606-1080