Ex Parte Tani

Patent Trial and Appeal Board

May 25, 2016

13170652 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/170,652
38485 7590
ARENT FOX LLP
FILING DATE
06/28/2011
05/27/2016
1675 BROADWAY
NEW YORK, NY 10019
FIRST NAMED INVENTOR
Satoshi Tani
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.
Ml071.3087 4221
EXAMINER
WALLS, CYNTHIA KYUNG SOO
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
NYIPDocket@arentfox.com
Patent_Mail@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI T ANI 1
Appeal2013-009525
Application 13/170,652
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and GEORGE
C. BEST, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 8, and 9 as unpatentable over
Xu (US 7 ,255,965 B2, issued Aug. 14, 2007) in view of Adachi (US
2005/0095503 Al, published May 5, 2005). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 MURATA MANUFACTURING CO., LTD. is identified as the Real Party
in Interest. App. Br. 2.
Appeal2013-009525
Application 13/170,652
Appellant claims a secondary battery comprising a non-aqueous
electrolyte solution containing lithium bis( oxalate )borate and lithium
difluoro(bisoxalato )phosphate respectively at 0.3 parts by weight or more
and 3.0 parts by weight or less and at 0.3 parts by weight or more and 2.0
parts by weight or less to 100 parts by weight of the non-aqueous electrolyte
solution (sole independent claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A non-aqueous electrolyte secondary battery
compnsmg:
a non-aqueous electrolyte solution containing a non-
aqueous solvent and an electrolyte, wherein at least two types
of lithium salts with an oxalato complex as an anion are
contained in the non-aqueous electrolyte solution,
wherein the at least two types of lithium salts are lithium
bis( oxalate )borate and lithium difluoro(bisoxalato )phosphate,
and
wherein the lithium bis( oxalate )borate and the lithium
difluoro(bisoxalato )phosphate are contained respectively at 0.3
parts by weight or more and 3.0 parts by weight or less and at
0.3 parts by weight or more and 2.0 parts by weight or less to
100 parts by weight of the non-aqueous electrolyte solution.
Br. 7 (Claims Appendix).
Appellant does not separately argue dependent claims 8 and 9 (Br. 5).
Therefore, these dependent claims will stand or fall with their parent
independent claim 1.
We sustain the Examiner's rejection for the reasons expressed in the
Final Action, the Answer, and below.
It is undisputed that Xu discloses a secondary battery comprising a
non-aqueous electrolyte solution containing mixtures of lithium salts
comprising lithium bis( oxalate )borate (Xu col. 3, 11. 5-15) but not lithium
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Appeal2013-009525
Application 13/170,652
difluoro(bisoxalato )phosphate and that Adachi discloses a battery
comprising an electrolyte containing mixtures of lithium salts including
lithium bis( oxalate )borate and lithium difluoro(bisoxalato )phosphate
(Adachi i-f 61) for inhibiting decomposition reaction of the electrolyte,
obtaining high-capacity, and improving charge/discharge efficiency (id. at
i-f 11) (Final Action 2).
The Examiner concludes that it would have been obvious to combine
the lithium bis( oxalate )borate of Xu' s electrolyte with lithium
difluoro(bisoxalato )phosphate to obtain the benefits taught by Adachi (id. at
2-3). In addition, the Examiner finds that the concentrations of these
lithium salts are recognized in the prior art as result effective variables and
concludes that it would have been obvious to determine appropriate
concentrations thereby achieving concentrations within the claim 1 range
(id. at 3).
Appellant states that the claimed concentration ranges significantly
improve the high-temperature cycle characteristics of the secondary battery
and that neither Xu nor Adachi contains any teaching or suggestion of such
improvement (Br. 4).
We recognize that an object of Appellant's invention is to improve the
above characteristics (Spec. i-f 9). However, the applied references need not
be directed to the same object or problem addressed by Appellant because
any need or problem disclosed by the references can provide a reason for
combining them in the manner claimed. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007). In this case, Xu and Adachi would have been
combined in the manner proposed by the Examiner in order to obtain the
benefits taught by Adachi to result from using lithium bis( oxalate )borate in
combination with lithium difluoro(bisoxalato )phosphate.
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Appeal2013-009525
Application 13/170,652
Appellant also states that examples 3-32 and 3-33 in Table 6 of
Adachi contain amounts of lithium difluoro(bisoxalato )phosphate higher
than the claim 1 range (Br. 4) and argue that combining Xu and Adachi
would result in a concentration of lithium difluoro(bisoxalato )phosphate
outside the claimed range (id. at 5).
Appellant's argument lacks persuasive merit. As noted by the
Examiner, Adachi does not limit the concentrations of lithium
difluoro(bisoxalato )phosphate to the amounts of the examples (Ans. 6-7).
In this regard, we observe that Adachi discloses a broad concentration range
of electrolyte salt in relation to solvent from about 0.3 mol/kg to about 3.0
mol/kg (Adachi i-f 67). Appellant does not even assert much less establish
that Adachi' s broad range is outside the claimed range.
Finally, Appellant contends that, "given the unpredictable nature of
chemical interactions, the Examiner's mere conclusory statements that it
would have [been] obvious to adjust the amounts of lithium
bis( oxalate )borate and lithium difiuoro(bisoxalato )phosphate to arrive at the
present invention as defined in independent claim 1 should be ignored"
(Br. 5).
We are unconvinced by Appellant's contention for a number of
reasons. First, Appellant has not established in this record that the claimed
combination and amounts of these lithium salts yield unpredictable or
unexpected results. Second, the Examiner's conclusion that it would have
been obvious to determine appropriate concentrations is not based on
conclusory statements as Appellant contends. Rather, this obviousness
conclusion is based on the Examiner's finding that lithium salt
concentrations are recognized in the prior art as result effective variables and
on the legal principle concerning the obviousness of determining appropriate
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Application 13/170,652
values for such result effective variables. We emphasize that neither the
finding nor the legal principle has been challenged by Appellant in the
record of this appeal.
For the reasons given above as well as in the Final Action and
Answer, Appellant fails to show error in the Examiner's rejection of the
appealed claims as unpatentable over Xu in view of Adachi.
The decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
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
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