TOYOTA JIDOSHA KABUSHIKI KAISHA

Patent Trials and Appeals Board

Nov 3, 2020

14897332 - (D) (P.T.A.B. Nov. 3, 2020)

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.
14/897,332 12/10/2015 Naoki OSADA 168969 1066
25944 7590 11/03/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
THOMAS, BRENT C
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte NAOKI OSADA,
SHIGENORI HAMA,
and TOMOYA SUZUKI
__________

Appeal 2020-003321
Application 14/897,332
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 9–25. We have jurisdiction under 35 U.S.C.
§ 6(b). A hearing was held on October 20, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Toyota Jidosha
Kabushiki Kaisha. Appeal Brief dated September 12, 2019 (“App. Br.”), at 1.
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The Appellant discloses that “[t]he present invention relates to a sulfide solid
electrolyte material having a high Li ion conductivity.” Spec. ¶ 1. The claimed
material comprises, inter alia, a high Li ion conducting phase having peaks at 2θ =
20.2° and 23.6° in an X-ray diffraction measurement using a CuKα ray. The
Appellant discloses that “[t]hose peaks are the peak of a crystal phase with a high
Li ion conductivity.” Spec. ¶ 29. The Appellant refers to that crystal phase as “a
high Li ion conducting phase.” Id. The claimed material also excludes a low Li
ion conducting phase having peaks at 2θ = 21.0° and 28.0°.
The Appellant discloses that a high Li ion conducting phase having peaks at
2θ = 20.2° and 23.6° and a low Li ion conducting phase having peaks at 2θ = 21.0°
and 28.0° was known in the art at the time of the Appellant’s invention. Spec. ¶ 6.
According to the Appellant, it was difficult, however, to increase the Li ion
conductivity of the material. Id.
As for ion conductivity, the Appellant discloses that “it is preferable that the
high Li ion conducting phase has high crystallinity.” Id.; see also Spec. ¶ 69
(disclosing that enhancing the crystallinity of a high Li ion conducting phase
results in high Li conductivity).
However, [in the prior art material] when the heat treatment
temperature is increased or heat treatment time is extended in order to
have higher crystallinity, a low Li ion conducting phase is generated
so that it is difficult to increase the Li ion conductivity. Furthermore,
when the heat treatment is carried out at the condition at which a low
Li ion conducting phase is not generated, the crystallinity of a high Li
ion conducting phase cannot be increased.
Spec. ¶ 6.
The Appellant discloses that “by shifting the tiny exothermic peak [of a low
Li ion conducting phase] to a high temperature side, crystallinity of a high Li ion
conducting phase can be increased without generating a low Li ion conducting
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phase” and “crystallinity of a high Li ion conducting phase can be increased
compared to a related art.” Spec. ¶ 8.
The sulfide solid electrolyte material of the Appellant’s invention is said to
be “preferably obtained by forming a sulfide glass based on amorphization of a raw
material composition and performing a heat treatment of the sulfide glass.” Spec.
¶ 41.
[T]he sulfide glass is preferably a material satisfying Tcx – Tc1 ≥ 55°C,
when the high Li ion conducting phase is c1, the low Li ion
conducting phase is cx, and, in differential thermal analysis,
temperature of the exothermic peak of c1 is Tc1 and temperature of the
exothermic peak of cx is Tcx . . . .
Spec. ¶ 42. According to the Appellant, when there is a large difference between
Tcx and Tc1, a low Li ion conducting phase is not produced and the crystallinity of a
high Li ion conducting phase can be increased. Spec. ¶ 81. The result is said to be
a sulfide solid electrolyte material with high Li ion conductivity. Spec. ¶ 69.
Claim 9 is reproduced below from the Claims Appendix to the Appeal Brief.
The limitation at issue is italicized.
9. A sulfide solid electrolyte material comprising
an ion conductor having Li, P and S, and having a PS43-
structure as a main component of an anion structure,
LiI, and
at least one of LiBr and LiCl,
wherein the sulfide solid electrolyte material contains a high Li
ion conducting phase having peaks at 2θ = 20.2° and 23.6°, does not
contain low Li ion conducting phase having peaks at 2θ = 21.0° and
28.0° in an X-ray diffraction measurement using a CuKα ray, and has
a half width of the peak at 2θ = 20.2° of 0.51° or less.
App. Br., Claims Appendix A-1.
The claims on appeal stand rejected as follows:
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(1) claims 9–14 and 16–20 under 35 U.S.C. § 103 as unpatentable over
Aburatani et al.;2
(2) claim 15 under 35 U.S.C. § 103 as unpatentable over Aburatani in
view of Kamiya et al.;3
(3) claims 21 and 22 under 35 U.S.C. § 103 as unpatentable over
Aburatani in view of Tsuchida et al.;4 and
(4) claims 23–25 under 35 U.S.C. § 103 as unpatentable over Aburatani
in view of Ohtomo et al.5
B. DISCUSSION
The Examiner finds Aburatani discloses a sulfide solid electrolyte material
as recited in claim 9, with the exception of the claimed peak angles of a high Li ion
conducting phase and the absence of the claimed peak angles of a low Li ion
conducting phase.6 Final Act. 3–4.7 Nonetheless, the Examiner finds Aburatani
teaches optimizing high Li ion conductive phases (corresponding to the claimed
peaks) to improve conductivity.8 Final Act. 4 (citing Aburatani ¶¶ 42, 151). More
specifically, the Examiner finds:

2 US 2015/0207170 A1, published July 23, 2015 (“Aburatani”).
3 US 2011/0065007 A1, published March 17, 2011 (“Kamiya”).
4 US 2010/0273062 A1, published October 28, 2010 (“Tsuchida”).
5 WO 2012/026238 A1, published March 1, 2012 (“Ohtomo”).
6 Claim 9 excludes a low Li ion conducting phase having peaks at 2θ = 21.0° and
28.0°. Claim 9, however, does not exclude a low Li ion conducting phase having
peaks other than those recited in claim 9.
7 Final Office Action dated March 1, 2019.
8 The Examiner also finds Aburatani teaches a composition and a method of
production that are substantially similar to the claimed invention. Final Act. 4, 7.
Although “inherency may supply a missing claim limitation in an obviousness
analysis,” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed.
Cir. 2014), the Examiner does not rely on inherency in the obviousness rejection
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[Aburatani] teaches that the conductive phase peaks are present in an
amount of 70% or more (which may include 100%) and that the non-
conductive phase peaks are present in an amount of 30% or less
(which may include 0%). Therefore Aburatani would obviate
optimizing an electrode composition to obtain a composition with no
low Li ion conducting phases which would have no corresponding
low Li ion conducting phase peaks.
Final Act. 4.
Referring to paragraphs 150 and 151 of Aburatani, the Appellant argues that
“Aburatani merely describes that the area ratio of the peaks of PS43- and P2S74- can
be high and that the area ratio of P2S64- can be low” and “does not contemplate
optimizing the structure of the crystals (i.e., the peaks) themselves.” App. Br. 10–
11.
In response, the Examiner finds that “the primary difference between the
Aburatani reference and the instant application is that Aburatani relies upon Raman
spectroscopy for characterization and the instant application relies upon X-ray
diffraction for characterization.” Ans. 11.
However, an examination of the Appellant’s Specification reveals that the
Appellant, like Aburatani, uses Raman spectroscopy to determine the ratio of an
anion structure in a composition. The Appellant discloses:
[T]he expression “has an ortho composition” . . . indicates a
composition in which an anion structure (PS43- structure) of an ortho
composition is included as a main component. The ratio of the anion
structure of an ortho composition is preferably 60 mol% or more,
more preferably 70 mol% or more, even more preferably 80 mol% or
more, and particularly preferably 90 mol% or more, relative to the
entire anion structure of an ion conductor. Incidentally, the ratio of

on appeal. See Examiner’s Answer dated January 27, 2020 (“Ans.), at 11
(explaining that “inherency is not relied upon”). Therefore, any finding by the
Examiner that Aburatani’s method necessarily results in a material comprising the
phases recited in claim 9 is not before us on appeal.
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the anion structure of an ortho composition can be determined by
Raman spectroscopy . . . .
Spec. ¶ 36. In contrast, the Appellant uses X-ray diffraction to measure the peaks
of the conducting phases.9 Spec. ¶¶ 29–30.
Aburatani uses Raman spectroscopy to identify a mixed peak of three
components, i.e., PS43-, P2S74- and P2S64-. Aburatani ¶ 142. Aburatani discloses
that PS43- and P2S74- are components having a high conducting performance and the
total of the area ratios of a peak corresponding to PS43- and a peak corresponding to
P2S74- (PS43-+ P2S74-) is 70 area % or more. Aburatani ¶ 151.
Relying on optimization, the Examiner finds that “one of ordinary skill in
the art would obtain a material which possesses the claimed structure and exhibits
the claimed properties if analyzed with X-ray diffraction.” Ans. 12.
“[T]he discovery of an optimum value of a variable in a known process is
normally obvious.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977). An exception
to that rule, however, is where the parameter sought to be optimized was not
recognized to be a result-effective variable. Id.
The Examiner relies on paragraphs 139–141 of Aburatani to show that time
and temperature “impact the end crystal structure” and thus are result-effective
variables. Ans. 11–12. Paragraph 139 of Aburatani states that “[t]he temperature
at the time of crystallization may be appropriately determined according to an
intended crystal structure.” Aburatani ¶ 139; see also Aburatani ¶ 141 (stating that
heating time may be changed according to the intended crystal structure). For
example, Aburatani discloses that “[i]n order to obtain a Li3PS4 crystal structure,
the crystallization temperature is preferably 80° C. or higher and 250° C. or lower,

9 Similarly, Aburatani uses X-ray diffraction (XRD) to measure crystal patterns.
See, e.g., Aburatani ¶¶ 167, 170, 181, 184.
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more preferably 100° C. or higher and 220° C. or lower.” Aburatani ¶ 140.
Aburatani, however, does not disclose that temperature (or time) also affects the
peaks of the high and low Li ion conductive phases of that material. In that regard,
the evidence of record shows that a crystalline form of Li3PS4 does not necessarily
contain a high Li ion conducting phase having a peak at 2θ = 23.6° as recited in
claim 9. Naoki Osada Declaration dated January 15, 2018, ¶ 8 (stating that “[a]s
shown in the [attached] XRD spectrums, the two crystalline forms of Li3PS4 do not
have a high Li ion conducting phase having a peak at 2θ =23.6°” (emphasis
omitted)). Thus, although Aburatani teaches that optimizing temperature and time
in the disclosed method results in an intended crystal structure, such as a Li3PS4
crystal structure, the evidence of record does not support a finding that temperature
and time were also known to affect the peaks of the high and low Li ion
conducting phases of Aburatani’s material.
In sum, the Examiner has not shown that a sulfide solid electrolyte material
having the peaks recited in claim 9 would have been obvious to one of ordinary
skill in the art based on the teachings of Aburatani. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (the examiner bears the initial burden of presenting a
prima facie case of unpatentability). Therefore, the obviousness rejection of claims
9–14 and 16–20 is not sustained.
The Examiner’s reliance on Kamiya, Tsuchida, and/or Ohtomo in the
obviousness rejections of dependent claims 15 and 21–25 does not cure the
deficiencies in Aburatani identified above. Therefore, the obviousness rejections
of claims 15 and 21–25 also are not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.

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In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9–14, 16–20 103 Aburatani 9–14, 16–20
15 103 Aburatani, Kamiya 15
21, 22 103 Aburatani,
Tsuchida
21, 22
23–25 103 Aburatani, Ohtomo 23–25
Overall
Outcome
9–25

REVERSED