2021000251 (P.T.A.B. May. 28, 2021)

Tatsuo Tomomori et al.

Patent Trials and Appeals BoardMay 28, 2021

2021000251 (P.T.A.B. May. 28, 2021)

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. 14/114,479 10/28/2013 Tatsuo Tomomori 5417/0154PUS1 1784 60601 7590 05/28/2021 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 EXAMINER ZEMUI, NATHANAEL T ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 05/28/2021 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): MAILROOM@MG-IP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TATSUO TOMOMORI, EIJI YAMANE, SHINICHIROU HORIE, and KOH YOSHIOKA Appeal 2021-000251 Application 14/114,479 Technology Center 1700 Before DONNA M. PRAISS, N. WHITNEY WILSON, and MONTÉ T. SQUIRE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s August 22, 2019 decision to finally reject claims 1, 3, 5, and 6 (“Final Act.”).1 A telephonic hearing was held on May 17, 2021, a transcript of which will be made part of the record. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Toyo Kohan Co., Ltd. (Appeal Br. 2). Appeal 2021-000251 Application 14/114,479 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a surface treated steel sheet for use in a battery case (Abstract). The surface of the steel sheet which forms the inner surface of the battery case comprises a nickel-cobalt alloy layer having a specific nickel to cobalt ratio (id.). Claim 1, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 1. A surface-treated steel sheet for battery cases, comprising: a nickel-cobalt binary alloy layer formed at the outermost surface of a plane to be an inner surf ace of a battery case; and an iron-nickel diffusion layer and/or an iron-nickel-cobalt diffusion layer between the nickel-cobalt binary alloy layer and a steel sheet, wherein the nickel-cobalt binary alloy layer is formed by performing a heat treatment for thermal diffusion after forming a nickel-cobalt alloy plated layer on the steel sheet or by performing a heat treatment for thermal diffusion after forming a nickel plated layer and a cobalt plated layer in this order on the steel sheet, wherein a Co/Ni value at the surface of the nickel-cobalt binary alloy layer is within a range of 0.2 to 0.8 as determined by Auger electron spectroscopy analysis, and wherein an immersion potential of the nickel-cobalt binary alloy layer in potassium hydroxide aqueous solution at 60°C is within a range of-0.4 to -0.02 V relative to an immersion potential of a nickel simple body in potassium hydroxide aqueous solution at 60°C. REFERENCES The prior art relied upon by the Examiner is: Appeal 2021-000251 Application 14/114,479 3 Name Reference Date Tomomori et al. US 2008/0292957 A1 November 27, 2008 Sakamoto JP 2007/122940 A May 15, 2007 REJECTION Claims 1, 3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sakamoto in view of Tomomori. OPINION The Examiner finds that Sakamoto teaches each limitation of claim 1, except that Sakamoto’s nickel-cobalt layer does not meet the limitation “wherein a Co/Ni value at the surface of the nickel-cobalt binary alloy layer is within a range of 0.2 to 0.8 as determined by Auger electron spectroscopy analysis” (Final Act. 2–3, citing Sakamoto ¶¶ 8–11, 13, 15, and 25). The Examiner further finds that Tomomori teaches a battery case formed from a steel sheet wherein the inner surface comprises a plating layer which meets the foregoing claim limitation (Final Act. 3, citing Tomomori, Abstract, ¶¶ 18, and 35–38). The Examiner determines that it would have been obvious to increase the amount of cobalt in Sakamoto’s cobalt-nickel layer because Tomomori teaches that when the amount of cobalt in the plating layer of innermost layer of a battery case increases, battery characteristics such as internal resistance, short-circuit current and discharge characteristics are improved (Final Act. 3, citing Tomomori ¶¶ 53–57, Table 1)). Appellant argues that the Examiner’s above-stated rationale for increasing the amount of cobalt in the nickel-cobalt plating layers is erroneous because Tomomori teaches the use of a phosphorus-nickel-cobalt ternary alloy, not the claimed nickel-cobalt phosphorus alloy (Appeal Br. 5). Therefore, Appeal 2021-000251 Application 14/114,479 4 according to Appellant, the improved characteristics achieved by Tomomori using a higher amount of cobalt are achieved using a ternary alloy which also includes phosphorus (id.). There is no evidence in Tomomori or Sakamoto, according to Appellant, that increasing the amount of cobalt in a cobalt-nickel binary alloy would improve battery performance (Appeal Br. 5–6). In response, the Examiner maintains that Sakamoto explicitly discloses that either a nickel-cobalt binary alloy or a nickel-cobalt- phosphorus alloy “can be employed as the innermost plating layer of the battery case” (Ans. 4, citing Sakamoto ¶ 15). Therefore, according to the Examiner, one of ordinary skill in the art would have found it obvious “to modify a Ni-Co binary alloy layer using data from a Ni-Co-P ternary alloy layer since both alloy types are art recognized equivalents for the same purpose.” The preponderance of the evidence of record supports Appellant’s position. As argued by Appellant, Tomomori is clearly directed to the use of a ternary cobalt-nickel-phosphorus alloy (Tomormori, Abstract, and Table 1). The Examiner’s position that Sakamoto teaches that a nickel-cobalt- phosphorus ternary layer is an art recognized equivalent to the Sakamoto’s cobalt-nickel binary layer is not supported by the evidence. In particular, Sakamoto’s paragraph 15, which recites that “the nickel alloy plating” can be, inter alia, either nickel-cobalt alloy plating or nickel-cobalt-phosphorus alloy plating, is specifically referring to the outer surface of the battery container, not the inner surface as recited in claim 1. The evidence does not support a finding that Tomomori’s teaching that an increased amount of cobalt in a nickel-cobalt-phosphorus ternary alloy would have suggested Appeal 2021-000251 Application 14/114,479 5 increasing the amount of cobalt in a nickel-cobalt binary alloy used on an inner surface of a battery casing to improve battery performance. Moreover, even if Sakamoto did suggest that a nickel-cobalt- phosphorus ternary alloy were equivalent to a nickel-cobalt binary alloy for use on the inner surface of a battery case, that would not have suggested that improvements to the properties achieved using a higher amount of cobalt in the ternary alloy would have meant that higher amounts of cobalt in a binary alloy would have yielded the same property improvements. CONCLUSION Because we agree with Appellant that evidence of record does not support the Examiner’s reasoning as to why a person of skill in the art would have combined the teachings of the references as needed for the rejection, we reverse. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 6 103(a) Sakamoto, Tomimori 1, 3, 5, 6 REVERSED