Ex Parte Tanigawa et al

Board of Patent Appeals and Interferences

Jul 13, 2007

10081087 (B.P.A.I. Jul. 13, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FUTOSHI TANIGAWA, YASUSHI NAKAMURA,
KOHJI YUASA, and SO KURANAKA
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Appeal 2007-1680
Application 10/081,087
Technology Center 1700
____________

Decided: July 13, 2007
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner's final rejection of claims 1
through 4 and 6 through 8, all of the claims pending the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.
Appeal 2007-1680
Application 10/081,087

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a positive electrode material
for use in alkaline storage batteries, containing nickel hydroxide and/or nickel
oxyhydroxide powder. Details of the appealed subject matter are recited in
representative claim 11 reproduced below:
1. A positive electrode active material for an alkaline storage battery
comprising: at least one selected from the group consisting of a nickel
hydroxide powder and a nickel oxyhydroxide powder,

(1) wherein said positive electrode active material has a mean particle
circularity from greater than 0.95 to less than 1 as determined by a particle
image analysis with a flat sheath flow utilizing hydrodynamics and wherein
the number of particles having a circularity of not larger than 0.85 accounts
for not more than 5% of the number of total particles within said positive
electrode material,

(2) said positive electrode material has a mean particle size from not
smaller than 5 µm to not larger than 20 µm on a volume basis,

(3) said positive electrode active material has a specific surface area
from not smaller than 5 m2/g to not larger than 20 m2/g, and

(4) at least said nickel hydroxide powder has an X-ray diffraction
pattern where a full width at half maximum of a peak attributed to (101) face
is from not less than 0.7 deg/2θ to not more than 1.2 deg/2θ and a ratio of a
peak intensity of a peak attributed to (001) face to a peak intensity of a peak
attributed to (101) face is not less than 1.1.

1 The Appellants do not separately argue the individual claims on appeal
(Br.5-15). Therefore, for purposes of this appeal, we decide the propriety of
the Examiner’s rejections based on claim 1 alone consistent with 37 C.F.R.
§ 41.37(C)(1)(vii)(2006).
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II. PRIOR ART
As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following prior art references:
Hayashi US 6,358,648 B2 May 10, 2002
Kato US 6,083,642 Jul. 4, 2000

III. REJECTION
The Examiner has rejected the claims on appeal as follows:
1. Claims 1-4, 6-8 under 35 U.S.C. § 102(e) as anticipated by or, in
the alternative, under U.S.C. § 103(a) as obvious over Hayashi; and
2. Claims 1-4, 6-8 under 35 U.S.C. § 102(e) as anticipated by or, in
the alternative, under U.S.C. § 103(a) as obvious over Kato.

IV. ISSUES
1. Does Hayashi or Kato describe a positive electrode active
material either identical or virtually identical to that claimed within the
meaning of 35 U.S.C. § 102(e)?
2. Would Hayashi or Kato have led a person of ordinary skill in the
art to produce a positive electrode material with the claimed circularity
specifications within the meaning of 35 U.S.C. §103?

V. ANALYSIS, FACTS, AND CONCLUSIONS OF LAW
I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)
states in relevant part:
Where. . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
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Application 10/081,087

applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. . . .
Whether the rejection is based on "inherency" under 35 U.S.C.
§ 102, on prima facie obviousness under 35 U.S.C. § 103, jointly
or alternatively, the burden of proof is the same, and its fairness
is evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products. [Citation omitted;
emphasis added.]
See also In re Spada, 911 F.2d 705, 708, 15 USPQ 2d 1655, 1658 (Fed. Cir.
1990); In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Here, consistent with the principle taught in Best, the Examiner has
correctly found that the products and/or processes described in Hayashi and
Kato appear to be identical or virtually identical to those claimed and
described in the instant application. Hayashi and Kato indeed teach a positive
electrode material comprising nickel hydroxide powder which is spherical in
shape with an average particle size of 10 µm (Hayashi, col. 4, ll. 50-52 and
Kato, col. 11, ll. 56-60). According to Kato, the spherical particles having an
average particle diameter of 10 µm have the claimed BET specific surface
area (e.g., col. 5, ll. 3-5). Hayashi also teaches that uniform crystal growth
reduces the amount of disordered crystals which improves the conductivity of
nickel hydroxide, which implies that the resulting spherical particles are
highly circular (uniform circularity).
In addition to the virtual or identical identity between the claimed and
prior art products, both Hayashi and Kato teach processes substantially
identical to the claimed process as well. They employ the same overall basic
procedure as that claimed: nickel hydroxide is obtained by reacting an
aqueous nickel sulfate solution with an aqueous sodium hydroxide solution
under overlapping pH conditions. Kato’s example 1 also describes the
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Application 10/081,087

process by which the pH is controlled during the nickel hydroxide formation
process to “deposit spherical solid solution nickel hydroxide particles” (col.
11, lines 56-60). Implicit in this teaching of Kato is that pH is an important
variable in the production of spherical particles. Hence, the overall evidence
of record reveals that the Examiner has demonstrated, by preponderance of
evidence, that the prior art and claimed products are either identical or
substantially identical. Therefore, it is reasonable for the Examiner to shift the
burden to the Appellants to prove otherwise.
The Appellants have not sufficiently demonstrated that the claimed
product is patently different from the prior art products. According to the
Appellants, their process is distinguished from the prior art processes by the
specific adjustment of pH, mixing, and temperature during the nickel
hydroxide formation phase, thus forming particles having the claimed
circularity, which are materially different the prior art particles (Br. 2).
However, the supporting portion (pages 16 and 17) of the Specification
proffered by the Appellants does not indicate that the Hayashi or Kato
reference does not produce particles of the claimed circularity. In fact, the
portion of the Specification relied upon by the Appellants reveals that the
mixing condition, temperature, and pH employed are useful in creating the
mean particle size taught by the prior art references. In other words, the
aspects of the Appellants’ disclosed process which they argue to be unique in
producing the claimed particles are actually revealed to be useful in creating
the spherical particles material described in the prior art. In any event, the
Appellants have not demonstrated that the pH, temperature, and mixing
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controlled process described in the Specification is the only way to produce
particles of the claimed circularity.
The Appellants are in the best position to provide evidence that the
Hayashi and/or Kato product does not possess the invention’s claimed
circularity, and other parameters. This is particularly true in this situation
where the prior art and current inventions have common assigned parties
(Matsushita Electric Industrial Co., Ltd). Absent factual evidence showing a
patentable difference between the prior art and claimed products, the
Appellants have not carried their burden of showing that the claimed product
is not anticipated by the prior art.

II. To the extent the products of the prior art and invention are not identical
or substantially identical, the Examiner’s rejection of the claimed invention as
obvious in light of Hayashi or Kato is also well-founded. As evidence of
obviousness of the claimed subject matter under § 103, the Examiner has
again relied on the disclosure of Hayashi or Kato. The Examiner has correctly
found that Hayashi and Kato disclose that nickel hydroxide is produced by
mixing and stirring nickel sulfate and sodium hydroxide solutions.
Furthermore, as indicated supra, Hayashi teaches that uniform crystal growth
reduces the amount of disordered crystals which improves the conductivity of
nickel hydroxide, thus suggesting the desirability of forming highly spherical
nickel hydroxide particles (uniform circularity). Similarly, Kato’s example 1
also describes the process by which the pH is controlled during the nickel
hydroxide formation process to “deposit spherical solid solution nickel
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hydroxide particles” (col. 11, lines 56-60), thus suggesting the pH control as
an important variable in the production of spherical (highly circular) particles.
Given the advantage of forming highly spherical particles and the need
to control the pH in forming spherical particles, we concur with the Examiner
that a person with ordinary skill in the art would have been led to produce the
claimed product using appropriate optimum processing variables within the
meaning of 35 U.S.C. § 103. KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727,
1740-41, 82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006) (“[A]nalysis [of whether the
subject matter of a claim is obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.”); In re Hoeschele, 406 F.2d 1403, 1406-07,
160 USPQ 809, 811 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom....”).
The Appellants only argue that the mean circularity and circularity
distribution of the particles are the reason for the invention’s non-obviousness.
(Br. 8). The Appellants allege that the claimed mean circularity and
circularity distribution impart unexpected results. (id.) In support of their
allegation, the Appellants have provided a chart depicting the resultant
changes in battery capacity arising from changes in the particle circularity. “It
[is] incumbent upon [A]ppellants to submit clear and convincing evidence to
support their allegation of an unexpected property.” In re Heyna, 360 F.2d
222, 228, 149 USPQ 692, 697 (CCPA 1966); In re Klosak, 455 F.2d 1077,
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1080, 173 USPQ 14, 16 (CCPA 1972)(“The burden of showing unexpected
results rests on [appellant] who asserts them.”)
However, the Appellants fail to carry their burden of showing
unexpected results. First, the chart does not give a reliable data set by which
the claimed invention can be shown to produce unexpected results. It is well
established that experimental results must be significant and practical. In re
D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA 1973).
However, the sample data provided does not prove to be statistically
significant. Examples 3 and 4 show that increasing the mean particle
circularity and decreasing the amount of particles with 0.85 circularity or less
actually decreased the battery capacity. This not only compromises the trend
proffered by the Appellants but also shows that the experimental results may
very well be within the margin of error attributable to the experimentation of
this type. Thus, we cannot ascertain whether the alleged unexpected results
based on the sample data are scientifically supported.
Second, the Appellants fail to compare their results with the closest
prior art. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA
1979); In re DeBlauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.
1984); In re Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281,
1285 (Fed. Cir. 1991). The comparative example provided is one of
independent fabrication and does not properly represent the closest prior art.
That is, comparative example 1 is not stipulated nor substantiated to be
representative of the embodiments described in Hayashi or Kato and,
therefore, it does not provide a baseline from which unexpected results can be
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judged. That is, the Appellants have not established that the claimed product
is unexpectedly superior to the products taught by Hayashi or Kato.
Third, Appellants’ offered data is not commensurate in scope with the
claimed invention. “Establishing that one (or a small number of) species
gives unexpected results is inadequate proof, for it is the view of this court
that objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support.” In re Greenfield,
571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978); See also In re
Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990).
While the examples are directed to particles having specific mean circularity
and circularity distribution, the claims are not so limited. The Appellants fail
to demonstrate that these examples are predictive of all the claimed particles,
especially those having varied surface areas, different mean circularity ranges,
and different diffraction ratios, including those ingredients not excluded by
the claims on appeal. (e.g., Br. 10, Table).
Thus, based on the totality of record, including due consideration of the
Appellants’ evidence and arguments, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103.

VI. ORDER
The decision of the Examiner is affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
AFFIRMED

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