Ex parte Maeda

Board of Patent Appeals
and Interferences
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TOSHIKI MAEDA,
HIROFUMI IISAKA,
SATORU SUZUKI, and
MANABU YAMADA
Appeal 2008-006267
Application 101715,525
Technology Center 1700
~ e c i d e d :	' July 22,2009
Before JAMES T. MOORE and ALLEN R. MacDONALD, Vice Chief
Administrative Patent Judges, and JEFFREY T. SMITH,
LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative
Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-006267
Application 101715,525
Appellants appeal under 35 U.S.C. 5 134 the final rejection of claims
1 and 3. We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b).
We AFFIRM.
BACKGROUND
Appellants' invention is directed to an active material for a positive
electrode of a lithium secondary battery (Spec. 1).
Claim 1 is illustrative:
1. An active material for a positive electrode of a lithium secondary
battery, comprising a lithium-nickel composite oxide of the general formula
Li,(Nil-,Coy) l-zMz02;where
0.01 5 z 5 0.2; and
M is chosen from at least one element selected from the group of Al,
Zn, Ti, and Mg; wherein
a. according to Rietveld analysis, the Li site occupancy rate for Li
sites in a crystal of the lithium-nickel composite oxide is 98% or greater;
b. the average particle size of spherical secondary particles of the
lithium-nickel composite oxide ranges from 5 pm to 15 pm; and
c. when the active material is subjected to a washing process, the
difference between the specific surface area of the active material before the
washing process and after the washing process is 1.07 m21g or less.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Sunagawa 	EP 0944 125Al 	Sep. 22, 1999

Appeal 2008-006267
Application 101715,525
Appellants appeal the following rejection:
Claims 1 and 3 are rejected under 35 U.S.C. 5 102(b) as being
anticipated by Sunagawa.
APPELLANTS7CONTENTIONS
Appellants do not contest the Examiner's finding (Ans. 4) that
Sunagawa7sactive material composition is the same as claimed by
Appellants (App. Br. 10-15 generally).
Instead, Appellants argue that mere compositional identity is
insufficient to establish that the claimed Li site occupancy rate and
difference in specific surface area after washing are inherent properties
(App. Br. 12-14). Appellants rely on Table 1 in the Specification as
showing that examples of active material made of the same composition
with different processing conditions have different properties (App.
Br. 12-13).
Appellants contend that the data in Table 1 shows identical
compositions do not necessarily exhibit the claimed Li site occupancy rate
and difference in specific surface area (App. Br. 13). Appellants contend that
material properties are dependent on a range of factors; including
composition and processing conditions (Reply Br. 3-4).
ISSUE
Having conceded that Sunagawa7sand Appellants7 compositions are
the same, the sole issue on appeal is as follows: have Appellants satisfied
their burden of showing that Sunagawa7scomposition does not inherently
possess the claimed Li site occupancy rate and difference in specific surface
area after washing properties? We decide this issue in the negative.

Appeal 2008-006267
Application 101715,525
PRINCIPLE OF LAW
Where the claimed and prior art products are identical or substantially
identical, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of the
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
FACTUAL FINDINGS
We rely on the Examiner's factual findings stated in the Answer (Ans.
4-7) and Final Office Action (2-4).
ANALYSIS
The Examiner's finding that Sunagawa's active material composition
is identical to the active material composition claimed by Appellants (Ans
4-7; Final Office Action 4) properly shifted the burden of showing that
Sunagawa's composition does not possess the Li site occupancy rate and
difference in specific surface area. Best, 562 F.2d at 1255.
However, the Appellants' evidence provided in Table 1 of the
Specification does not establish that Sunagawa's composition does not
possess the claimed Li site occupancy rate and difference in specific surface
area properties. Specifically, as indicated by the Examiner (Ans. 6), the
Table 1 evidence does not include the necessary comparison of an active
material composition made according to Sunagawa's disclosure to the
claimed composition made according to Appellants' disclosure.
Instead, Table 1 merely provides examples of Appellants' claimed
composition and Appellants' comparative examples, none of which are
alleged to correspond to Sunagawa's material. Appellants have not alleged
or provided persuasive evidence that the compositions in Table 1 of the
Specification represent the closest prior art.

Appeal 2008-006267
Application 101715,525
Appellants7 evidence therefore does not satisfy their burden.
DECISION
We affirm the Examiner's fj 102(b) rejection of claims 1 and 3 over
Sunagawa.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. fj l.l36(a)(l)(v)(2008).
ORDER
AFFIRMED
cam
FINNEGAN HENDERSON FARABOW
GARRETT & DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413