Ex Parte Okae et alDownload PDFPatent Trial and Appeal BoardDec 12, 201610646226 (P.T.A.B. Dec. 12, 2016) Copy Citation 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. 10/646,226 08/22/2003 Izaya Okae 3712174.00424 1391 29175 7590 12/14/2016 K&T Oates T T .P-Phiraan EXAMINER P.O.BOX 1135 CHICAGO, IL 60690 EGGERDING, ALIX ECHET .MEYER ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 12/14/2016 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IZAYA OKAE, KEIZO KOGA, and TAKEHIKO TANAKA Appeal 2016-000253 Application 10/646,226 Technology Center 1700 Before: BRADLEY R. GARRIS, MONTE T. SQUIRE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 6, 9, 10, 12—14, 16, 19, and 22—30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Sony Corporation is identified as the real party in interest. (Appeal Brief, filed April 2, 2015 (“App. Br”), 2.) 2 Final Rejection mailed October 31, 2014 (“Final Act.”). Appeal 2016-000253 Application 10/646,226 CLAIMED SUBJECT MATTER The claims are directed to “a positive active material having ... a high discharge capacity and good high-temperature stability” and “a non-aqueous electrolyte secondary battery using the positive active material.” (Spec. 3:10—13.)3 The particular positive active material includes lithium nickelate and an olivine compound for “it is effective to cover surfaces of particles of lithium nickelate with an olivine compound for maximizing characteristics of lithium nickelate and the olivine compound.” (Id at 3:14—24.) Claim 6, reproduced below, is illustrative of the claimed subject matter: 6. A positive active material comprising: one or more particles of lithium nickelate having a surface and having a formula LiyNii-z M'zCE where 0.05 £ y £ 1.2 and 0 £ z £ 0.5, and M' is selected from the group consisting of Fe, Mn, Cu, Zn, Sn, Ga, Cr, V, Ti, Mg, Ca, Sr and mixtures thereof; and a crushed olivine compound having an olivine-type crystal structure and having a formula LixMP04 where 0.05 £ x £ 1.2, and M is selected from a group consisting of Fe, Mn, Co, Ni, Cu, Zn, Mg and mixtures thereof, wherein the surface of the particles of lithium nickelate are uniformly covered with the crushed olivine compound such that the crushed olivine compound forms a substantially 3 Application 10/646,226, Positive Active Material and Non-Aqueous Electrolyte Secondary Battery, filed August 22, 2003. We refer to the “’226 Specification,” which we cite as “Spec.” 2 Appeal 2016-000253 Application 10/646,226 continuous layer having a thickness of about 0.1 jum to about 10 jim around the lithium nickelate particles, and wherein a content of the crushed olivine compound in the positive active material ranges from 5 wt% to 50 wt%. (Claims Appendix, App. Br. 20 (emphases added).) REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Abe Goodenough Chaloner-Gill et al. Armand et al. Kurose et al. Yamaura US 6,258,483 B1 US 6,391,493 B1 US 2002/0192137 US 2004/0033360 US 6,824,924 B1 JP 02-075368 July 10, 2001 May 21, 2002 Dec. 19, 2002 Al Feb. 19, 2004 Nov. 30, 2004 Mar. 15,2002 REJECTIONS Claims 6, 9, 12, 13, 16, 19 and 22—30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yamaura, Armand, Abe, Kurose, and Chaloner-Gill. (Final Act. 3.) Claims 10 and 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yamaura, Armand, Abe, Kurose, Chaloner-Gill, and Goodenough. (Final Act. 6.) OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. 3 Appeal 2016-000253 Application 10/646,226 Claim 64 Appellants argue that the combined prior art fails to teach a positive material having a “surface of the particles of lithium nickelate [that is] uniformly covered with the crushed olivine compound such that the crushed olivine compound forms a substantially continuous layer . . . around the lithium nickelate particles” and the “crushed olivine compound . . . ranging] from 5 wt% to 50 wt%” as recited in claim 6. (App. Br. 12—13.) Appellants present declaratory evidence5 from co-inventor Mr. Izaya Okae and argue that the lithium nickelate of Yaumura does not have a surface that is “uniformly covered with the crushed olivine compound” as recited in claim 6. (App. Br. 12.) According to Mr. Okae, Yamaura “fails to teach or even suggest that its LiFeP04 particles are mixed with its lithium nickelate particles at a sufficiently high speed or in such a manner as to uniformly cover the lithium nickelate particles with the LiFeP04 or to otherwise form a substantially continuous layer.” (Okae Aff. 110 (emphasis in original).) The Examiner, on the other hand, finds that the characteristics of the material resulting from the agitation process may also depend on the temperature — in addition to the speed — of the agitation process as taught in Yamaura. (Ans. 3 (citing Yamaura 140).) The Examiner therefore finds Mr. Okae’s statement inadequate as it does not address the lack of temperature disclosure of the agitation process in the ’226 Specification. 4 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), claims 9, 12, 13, 16, 19 and 22—30 stand or fall with claim 6, as Appellants make no distinct arguments beyond the arguments regarding claim 6. (App. Br. 12-18.) 5 Affidavit submitted by Mr. Izaya Okae on June 20, 2014 (“Okae Aff.”). 4 Appeal 2016-000253 Application 10/646,226 (Ans. 3.) Because neither Appellants nor Mr. Okae responds to the Examiner’s findings here, no reversible error has been identified. (Compare App. Br. 12, Reply 2—3 & Okae Aff. 110 with. Ans. 3.) Mr. Okae additionally states that because Yamaura teaches “simply mix[ing] the olivine compound” with the lithium nickelate particles “such that the olivine compound is randomly adhered to the particle surfaces,” a skilled artisan would not have found “particles of lithium nickelate” being “uniformly covered with the olivine compound” recited in claim 6 obvious. {Id. 3, 12 (emphasis in original); see App. Br. 12—13.) Mr. Okae, however, does not explain what “a substantially continuous layer” of olivine that “uniformly” covers particle surfaces entails. (See, e.g., Okae Aff. H 3, 12.) The claim term “uniformly covered” certainly cannot be read in isolation from claim 6 as a whole which recites “the surface of the particles of lithium nickelate are uniformly covered with the crushed olivine compound such that the crushed olivine compound forms a substantially continuous layer .... around the lithium nickelate particles.” Based on the plain language of claim 6, “the lithium nickelate particles” that are “uniformly covered” require no more than “a substantially continuous layer” of the olivine compound. Appellants and Mr. Okae do not argue otherwise.6 Appellants do not refute that Yamaura teaches a lithium nickelate “whose surface is covered with the LiFe04 fine particles.” (Yamaura 127.) Given that the ’226 Specification shows embodiments in which olivine 6 Appellants argue that Yamaura fails to use the terms “uniform” or “continuous” to describe how the prior art lithium nickelate particles are covered. (App. Br. 13.) We note that Appellants have not pointed us to the ’226 Specification where the claim term “substantially continuous” is used. 5 Appeal 2016-000253 Application 10/646,226 particles “densely adhere” the lithium nickelate particles “in the form of a layer” but is silent as to the continuity of the olivine layer (Spec. 22:7—11, 23:11—14 (cited in App. Br. 3 as support for claim 6)), Appellants have not explained why “the lithium nickelate particles” having “a substantially continuous layer” of olivine as recited in claim 6 is patentably distinguished from the prior art material. Appellants also do not refute that Yamaura teaches that it is advantageous to modify lithium nickelate “with heat-stable LiFePOf’ to reduce “the capacity fade at a high temperature.” (Yamaura 126 (cited in Ans. 3); see App. Br. 12—13; see also Reply7 2—3.) Based on this unrefuted teaching, the Examiner reasons that a skilled artisan would have known to prevent the electrolyte solution to contact and destroy the lithium nickelate particles by coating the particles. (Ans. 3.) To the extent that claim 6 is an improvement over Yamaura (if any), the record before us does not show that it is beyond an artisan’s skill to do so. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). No reversible error has been identified in this aspect of the obviousness analysis. Appellants also argue that Yamaura teaches a composition having 3.3 wt% ofLiFePCE which is too small to “uniformly cover” the lithium nickelate particles. (App. Br. 13; see also Okae Aff. || 11, 13.) The Examiner, however, responds that the weight percentage of olivine depends on both the thickness and the continuity of the olivine layer and reasons that 7 Reply Brief filed September 30, 2015 (“Reply”). 6 Appeal 2016-000253 Application 10/646,226 whether the prior art weight percentage is sufficient for “a substantially continuous layer” as recited in claim 6 cannot be analyzed independent of the thickness of the layer. (Ans. 5.) The weight percentage of olivine, of course, cannot be analyzed in isolation from the continuity of the olivine layer either. Neither Appellants nor Mr. Okae responds to the Examiner’s reasoning, much less disputing it. (Compare id. with Reply 4; see also Okae Aff. H 11, 13.) No reversible error is identified here. Appellants also argue that the “5 wt% to 50 wt%” of olivine compound is not taught by Yamaura’s composition which has 3.3 wt% of LiFeP04 or Abe’s material which does not include an olivine compound covering lithium nickelate particles at all. (App. Br. 13; see also 11 Okae Aff. 15, 16.) The ’226 Specification seeks “to enhance stability of lithium nickelate at a high temperature state while keeping a high charge/discharge capacity of lithium nickelate and suppressing a reduction in energy density by addition of the olivine compound, and hence to combine a charge/discharge capacity and a high-temperature stability.” (Spec. 8:26—30.) Yamaura similarly provides a composition having “high capacity and excellent charging/discharging cycle characteristics.” (Yamaura 127.) Such a composition includes LiNii.xMx02 particles “whose surface is covered with . . . FiFePOf’ to achieve “high energy density derived from the Ni composite oxide and structural stability during charging derived from FiFePCF while suppressing the structural deterioration of the Ni composite oxide . . . .” (Id.) “[WJhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine 7 Appeal 2016-000253 Application 10/646,226 experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955). In this case, Yamaura discloses, for example, that “LiFe04 exhibits excellent structural stability and a lower degree of capacity fade” but “it has a problem of low energy density, which makes it difficult to be used alone.” (Yamaura 125.) While one particular embodiment in Yamaura shows a composition having 3.3 wt% olivine, Yamaura provides that its disclosure “will not be restricted to” the “concrete numerical numbers” used in the embodiment. {Id. 1 53.) Based on Yamaura’s teaching that it is advantageous to coat lithium nickelate particles with olivine, a skilled artisan having ordinary creativity would have known to increase the amount of olivine used for the advantages taught in Yamaura. KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation [of a known work], §103 likely bars its patentability.”). The Examiner in this case also cites to Abe for the teaching to “adjust the amount of compound coated on a base particle in order to achieve a desirable result.” (Ans. 5.) Appellants’ argument and Mr. Okae’s statements, based on the fact that the compounds and methods in Abe are not identical to those in Yamaura (App. Br. 13; Aff. H 15, 16), do not explain why Abe’s teachings are limited to these particular embodiments and have not identified reversible error in this aspect of the obviousness analysis. Appellants lastly argue that there is no reasonable expectation of success in combining Yamaura and Abe because Abe should be limited to the specific embodiment where the amount of cobalt hydroxide precipitated on the nickel hydroxide particles may be adjusted. (App. Br. 14; Okae Aff. 17, 18.) All of the features of the secondary reference, however, need not be bodily incorporated into the primary reference and the skilled artisan is 8 Appeal 2016-000253 Application 10/646,226 not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). As the Examiner finds, a skilled artisan would have reasonably expected that the amount of coating around a particle would affect the overall characteristic of the coated particle. (Ans. 5.) No reversible error has been identified in this aspect of the obviousness analysis. Having addressed each argument regarding the prima facie case of obviousness, we now turn to Appellant’s argument that the claimed composition achieves unexpectedly improved discharge retention rates. In support of Appellants’ argument, Mr. Okae states that when LiNiCE and LiMnPCE are mixed “in a high speed mixer/crusher,” the resultant composition exhibits significantly higher discharge capacity retention rate than if LiNiCE and LiMnPCE were “simply mixed ... in a mortar.” (Okae Aff. || 4—9 (citing Spec. Fig. 5 and accompanying texts).) “[I]t is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims.” In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972). In this case, Appellants acknowledge that “the data in the Specification are only directed to LiMnPCE” but argue that “the specific formula is not important as long as the compound has the general formula LiXMPCE” because of the olivine type crystal structure. (Reply 6; see also App. Br. 17.) Because Appellants do not point to Mr. Okae’s Affidavit or other factual evidence in support of this argument, we are not persuaded that the Examiner reversibly erred in finding against unexpected results. “Attorney’s argument in a brief cannot 9 Appeal 2016-000253 Application 10/646,226 take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, the Examiner finds that instead of comparing the closest prior art material with the material having the compositional limitations recited in claim 6, the comparisons cited by Mr. Okae are based on the different methods for making the material. (Ans. 6.) To the extent that the ’226 Specification and Mr. Okae use the phrase “randomly adhered” to describe the resultant material from the prior art method, Appellants have not pointed us to factual evidence showing that the prior art material does not have the parameters recited including “a substantially continuous layer” of olivine around the lithium nickelate particles. (App. Br. 17 (citing to Fig. 3 and accompanying texts of the ’226 Specification which shows an image of the material at issue in claim 6 but the ’226 Specification does not provide an image of the prior art material).) The comparisons made in the ’226 Specification on which Mr. Okae relies in his affidavit are limited to one embodiment of LiNi02 being coated with LiMnP04. (See Okae Aff. || 3—8 (citing various portions of the ’226 Specification).) Appellants have not presented adequate evidence showing why one such particular embodiment is commensurate in scope with claim 6 which is much broader in scope. The ’226 Specification shows that different methods may be used to coat LiNi02 with TiMnPO^ and that the resultant materials may have different properties. (See, e.g., Spec. 20-23.) Claim 6, however, is a product claim and not a process claim. Appellants have not pointed us to factual evidence showing that the prior art material is structurally different from the material based on whether “the surface of the particles of lithium 10 Appeal 2016-000253 Application 10/646,226 nickelate . . . [is] uniformly covered with the crushed olivine compound such that the crushed olivine compound forms a substantially continuous layer . . . . around the lithium nickelate particles” as recited in claim 6. No reversible error has been identified in the Examiner’s evaluation of the unexpected results evidence. Claims 10 Sc 14 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), claims 10 and 14 stand or fall with claim 6, as Appellants make no distinct arguments beyond the arguments regarding claim 6. (See App. Br. 18.) DECISION The Examiner’s rejection of claims 6, 9, 10, 12—14, 16, 19, and 22—30 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation