KABUSHIKI KAISHA TOSHIBADownload PDFPatent Trials and Appeals BoardOct 25, 20212020005728 (P.T.A.B. Oct. 25, 2021) 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. 15/066,315 03/10/2016 Takuya IWASAKI 468516US20RD 4948 22850 7590 10/25/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER YANCHUK, STEPHEN J ART UNIT PAPER NUMBER 1723 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKUYA IWASAKI, YASUHIRO HARADA, and NORIO TAKAMI Appeal 2020-005728 Application 15/066,315 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and DONNA M. PRAISS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–16. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “KABUSHIKI KAISHA TOSHIBA”. Appeal Br. 2. Appeal 2020-005728 Application 15/066,315 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added to highlight the key disputed limitation): 1. An electrode comprising: a current collector; and an electrode layer formed on the current collector and containing particles of an active material containing niobium- titanium composite oxide, the electrode layer containing a conductive agent, wherein the particles of the active material contain secondary particles in which primary particles containing the niobium- titanium composite oxide are aggregated, an average particle size of the secondary particles is within a range of 1 μm to 30 μm, and a mode diameter in a pore diameter distribution of the electrode layer obtained by mercury porosimetry is within a range of 0.1 μm to 0.2 μm. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chen US 2010/0176352 A1 July 15, 2010 Iwasaki US 2013/0122349 A1 May 16, 2013 Lee US 2013/0189582 A1 July 25, 2013 Harada US 2013/0209863 A1 Aug. 15, 2013 Sonobe US 2016/0204439 A1 July 14, 2016 REJECTIONS Claims 1–7, 9, 10, and 12–16 are rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Harada, Lee, and Iwasaki. Non-Final Act. 2. Appeal 2020-005728 Application 15/066,315 3 Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Harada, Lee, Iwasaki, and Sonobe. Non-Final Act. 5. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Harada, Lee, Iwasaki, and Chen. Non-Final Act. 6. OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection). We sustain the § 103 rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. The Supreme Court has established that “the [obviousness] analysis 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). There is no dispute that Harada describes an electrode containing particles of niobium-titanium composite oxide as recited in claim 1. The Examiner relies upon Lee to exemplify that such particles may range in Appeal 2020-005728 Application 15/066,315 4 diameter from 0.1 to 40µm and a pore size may be .01 to 1µm. (Lee ¶¶ 25, 29; Non-Final Act. 2–3). The Examiner relies upon Iwasaki to exemplify that a mode diameter of an electrode’s active material may be between 0.1– 2µm (Iwasaki ¶ 44; Non-Final Act. 3). The only dispute is whether the overall teachings of the applied prior art render obvious the mode diameter as recited in claim 1. Appellant’s main argument is that there is no reason to modify Harada’s negative electrode with Iwasaki since Iwasaki does not teach a niobium-titanium oxide composite oxide (Appeal Br. 7–9). Appellant contends that the ranges taught in Iwasaki for a first and second mode diameter do not adequately suggest claim 1’s mode diameter range (Ans. 13). Appellant also contends that Harada and Lee are improperly combined (Appeal Br. 11–12). Appellant argues there is no basis in the applied prior art for the Examiner’s conclusion regarding optimizing Harada’s mode diameter (Appeal Br. 13). Appellant’s arguments are reiterated in the Reply Brief. These arguments are not persuasive of reversible error in the Examiner’s obviousness determination for reasons well stated in the Examiner’s Answer (Ans. 3–12). The law is replete with cases in which the difference between the claimed invention and the prior art is the claimed range or other variable within the claims. These cases have also consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have Appeal 2020-005728 Application 15/066,315 5 consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged unexpected results are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, it is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Furthermore, “[a] recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Harada is silent as to the pore diameter of the electrode active particles as well as a mode diameter, but does teach that particle diameters may be varied to correspond to battery performance (Harada ¶ 52). As pointed out by the Examiner, Lee and Iwasaki exemplify that pore size, particle sizes, and mode diameter of electrode active materials are result effective variables for optimizing electrode performance (Ans. 9–12; Lee ¶¶ 24, 25, 29; Iwasaki ¶¶ 35, 36). One of ordinary skill in the art using no more than ordinary creativity would have found workable and optimal ranges for these variables, and would have also readily inferred from the overall teachings of the applied prior art that mode diameters as disclosed in Iwasaki for lithium titanate electrode active materials may be useful for Appeal 2020-005728 Application 15/066,315 6 niobium-titanium composite oxide electrode active materials as used in Harada and recited in claim 1. Accordingly, substantial evidence supports the Examiner’s obviousness determination of the recited range of a mode diameter in a pore distribution as recited in claim 1. Having determined that the Examiner has established a prima facie case of obviousness, the issue becomes whether Appellant has established any criticality to the claimed range. Appellant, however, does not rely upon any objective evidence of criticality or unexpected results from the claimed ranges. The Examiner sufficiently addresses Appellant’s contentions regarding improved battery performance (Ans. 3–7). In light of these circumstances, we affirm the Examiner’s § 103 rejections of all the claims on appeal, noting that Appellant does not separately argue any claims dependent on claim 1. CONCLUSION The Examiner’s decision to reject claims 1–16 is AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 9, 10, 12–16 103 Harada, Lee, Iwasaki 1–7, 9, 10, 12–16 8 103 Harada, Lee, Iwasaki, Sonobe 8 11 103 Harada, Lee, Iwasaki, Chen 11 Overall Outcome 1–16 Appeal 2020-005728 Application 15/066,315 7 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation