Ex Parte Ugaji et al

Patent Trial and Appeal Board

Oct 31, 2014

12439280 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/439,280 02/27/2009 Masaya Ugaji 11329/19 2702
757 7590 10/31/2014
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
SIDDIQUEE, MUHAMMAD S
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
10/31/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAYA UGAJI, KAORU INOUE, and
TAKAYUKI SHIRANE
____________

Appeal 2012-012636
Application 12/439,2801
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision finally rejecting as unpatentable, under 35 U.S.C. § 103(a), claim 1
over Satou2 in view of Yahagi.3 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).

1 According to Appellants, the Real Party in Interest is Panasonic
Corporation (Appeal Br. 2).
2 US 2006/0110660 A1, published May 25, 2006.
3 JP 10-270088, published October 9, 1998.
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Application 12/439,280

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We AFFIRM, but designate our affirmance as a NEW GROUND OF
REJECTION.4

STATEMENT OF THE CASE
The invention is directed to a lithium secondary battery whose
negative electrode has an active material including silicon or tin (Spec. ¶ 1).
Appellants disclose that the silicon or tin may be elemental, or may be an
oxide, an alloy, a compound, or a solid solution of silicon or tin (id. at ¶ 31).
Appellants further disclose the preferred active material is LiaSiOx, where
0 < a ≤ (x+0.5), produced by lithium vapor deposition onto SiOx, where
0.1 ≤ x ≤ 0.5 (id. at ¶ 117). According to Appellants, this range provides
excellent charge/discharge cycling and charge density characteristics (id. at
Table 1).
Sole claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A lithium secondary battery, comprising:
a positive electrode having a positive electrode active
material for absorbing and releasing a lithium ion;
a negative electrode having a current collector and a
negative electrode active material provided on the current
collector, the negative electrode active material including at
least one of silicon oxide and tin oxide; and
a non-aqueous electrolyte having lithium ion
conductivity and being interposed between the positive
electrode and the negative electrode,
wherein a completely charged state of the lithium
secondary battery is defined by the positive electrode active
material and the negative electrode active material charged at a

4 Our decision refers to Appellants’ Appeal Brief (App. Br.) filed June 18,
2012, the Examiner’s Answer (Ans.) mailed August 13, 2012, and
Appellants’ Reply Brief (Reply Br.) filed September 18, 2012.
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Application 12/439,280

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first partially charged level at which the negative electrode
active material is in an around 90% charged state,
a completely discharged state of the lithium secondary
battery is defined by a second partially charged state at which
the negative electrode active material is in an around 10%
charged state, and
the negative electrode active material has lithium vapor-
deposited thereon to adjust the second partially charged level,
and
further wherein the negative electrode active material is
made mainly of SiOx (0.1 ≤ x ≤ 0.5), which is made into
LiaSiOx (0 < a ≤ (x + 0.5)) by vapor-depositing lithium on the
negative electrode.
App. Br. 10, Claims App’x, (Emphasis added).

ANALYSIS
The dispositive issue before us is whether the Examiner erroneously
determined that a lithium secondary battery having a negative electrode
active material made of LiaSiOx, where 0 < a ≤ (x+0.5), would have been
obvious over the combined teachings of Satou and Yahagi to one of ordinary
skill in the art.
For the reasons expressed in Examiner’s Answer and below, we
answer this question in the affirmative and, therefore, will sustain this
rejection.
The Examiner finds, and Appellants do not contest, that Satou teaches
a lithium secondary battery as claimed except for a negative electrode active
material made of LiaSiOx, where 0 < a ≤ (x + 0.5). Ans. 2; App. Br. 6–7.
The Examiner finds Yahagi discloses a lithium secondary battery comprising
a negative electrode whose active material is a low grade oxide, LixSiOy,
where x ≥ 0.2 > y >0. Ans. 2. The Examiner concludes it would have been
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obvious to utilize such a low grade oxide as Satou’s electrode active material
in order to provide a battery with high voltage and high energy density, as
well as good charging/discharging characteristics. Id. at 3.
Appellants argue Yahagi teaches LixSiOy, where 0 ≤ x and 0 < y < 2.
App. Br. 7; Reply Br. 2; Yahagi, ¶ 12. As such, Appellants assert Yahagi’s
defined area for LixSiOy is broad and open end, noting that x ≥ 0 covers any
amount of Li, while 0 < y < 2 provides no criticalities. App. Br. 8–9; Reply
Br. 2–3. Appellants contend that since Yahagi fails to teach the closed,
limited area for LiaSiOx recited in the claim, the claim would not have been
obvious. App. Br. 9; Reply Br. 3.
We note Appellants direct our attention to Yahagi, ¶ 12, for teaching
the low grade oxide, LixSiOy, where 0 ≤ x and 0 < y < 2. Although the
Examiner does not specifically identify support in Yahagi for the low grade
oxide being LixSiOy, where x ≥ 0.2 > y >0, we note the Abstract of the
English language machine translation of Yahagi appears to support the
Examiner’s finding. However, a careful inspection of Yahagi, ¶ 12, in both
the original Japanese language document and the English language machine
translation, reveals that Yahagi actually discloses the low grade oxide,
LixSiOy, where 0 ≤ x and 0 < y < 2, as asserted by Appellants. Yahagi
separates the condition, 0 ≤ x, from the condition, 0 < y < 2, by a comma
and a space. In the Abstract, the English machine translation incorrectly
interprets this comma and space, conjoining the two conditions with a
decimal. Compare Yahagi, original Japanese, ¶ 2, with Yahagi, English
language Abstract. This error is confirmed when reviewing the same
Japanese language translated in ¶ 12, where the machine translation
correctly leaves the comma and space, thereby preserving the two separate
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conditions. Accordingly, the Examiner’s finding regarding Yahagi is based
on an erroneous machine translation.
Notwithstanding the Examiner’s reliance on an erroneous English
language machine translation, we do not find Appellants’ arguments
persuasive of reversible error. As Appellants acknowledge, Yahagi teaches
an area of the LixSiOy structure of the negative electrode active material for a
lithium secondary battery that encompasses the claimed area. App. Br. 7, 9;
Reply Br. 2–3 (LixSiOy, where 0 ≤ x and 0 < y < 2). See In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) (““[A] prior art reference that discloses a
range encompassing a somewhat narrower claimed range is sufficient to
establish a prima facie case of obviousness. That is not to say that the
claimed composition having a narrower range is unpatentable. Rather, the
existence of overlapping or encompassing ranges shifts the burden to the
applicant to show that his invention would not have been obvious.”)
We further note Yahagi solves problems with both degradation of the
negative electrode and charge/discharge performance using the LixSiOy
structure, the same problems Appellants address with the claimed LiaSiOx
structure. Compare Yahagi, Abstract, and ¶¶ 1, 6, and 7, with App. Br. 7–8.
Indeed, Yahagi teaches an example, SiOy, where y = 0.5, that is within
Appellants’ claimed area. Yahagi, ¶ 13. In addition, Yahagi teaches an
electrochemically reactive amount of lithium is included in the LixSiOy
structure, with one of the examples of SiOy being SiO0.5. Id. We find an
electrochemically reactive amount of lithium is the type of result effective
parameter that one of ordinary skill in the art would have optimized by
routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
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235 (CCPA 1955) (“it is not inventive to discover the optimum or workable
ranges by routine experimentation.”).
On this record, we cannot say that an optimized electrochemically
reactive amount of lithium for the LixSiOy structure, where y = 0.5, does not
fall within the claimed range by routine experimentation. Only if the ‘results
of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained
for the claimed range. In re Antonie, 559 F.2d 618, 620 (CCPA 1977); In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). Because the claimed
invention falls within the ranges described in the prior art, there is a
presumption of obviousness that may be rebutted by a showing that the
claimed invention provides new and unexpected results relative to the prior
art. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004) (citing In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
We note Appellants contend the claim recites an active lithium silicon
oxide material that is limited and provides reasons for selecting a narrower
range. App. Br. 7–9. Specifically, Appellants assert that for LiaSiOx, where
a is small, stable coatings are not formed sufficiently, resulting in low cycle
retention ratios. Id. Where a is large, Appellants teach the active material
lump expands significantly resulting in a decrease in the cycle retention
ratios. Id. Conversely, Appellants assert that when x is large, the cycle
retention ratio is high, but energy density decreases. Id. Appellants also
teach that when x is small, the energy density increases, but the negative
electrode active material changes expands and contracts significantly,
resulting in damage to the material. Id.
We note that Appellants neither argue nor demonstrate that the
claimed area determined for a and x would have been unexpected to one of
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ordinary skill in the art. As such, Appellants have not rebutted the prima
facie case of obviousness over Satou in view of Yahagi.
Accordingly, we affirm the Examiner’s prior art rejection of claim 1
under 35 U.S.C. § 103(a) for the reasons given above. However, because
our findings and reasoning extends beyond that provided by the Examiner,
we designate our affirmance as a new ground of rejection. In re
Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (“[m]ere reliance on the
same statutory basis and the same prior art references, alone, is insufficient
to avoid making a new ground of rejection when the Board relies on new
facts and rationales not previously raised to the applicant by the examiner.”
(citation omitted)).

ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claim 1 under
35 U.S.C. § 103(a) as unpatentable over Satou and Yahagi is affirmed.
However, we denominate our affirmance as including a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) in order to afford Appellants
ample opportunity to address the new fact findings and reasoning in this
opinion.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

AFFIRMED
37 C.F.R. § 41.50(b)

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