Appeal 2007-1118
Application 10/237,089
ordinary skill in the art would have recognized that the anodes of Sakashita
would be subject to the same expansion, powderization, and destruction
Umeno solves by carbon coating (Answer 7). This is especially true because
the SiOx of Sakashita is a mixture of Si and SiO2. One of ordinary skill in
the art would have expected the carbon coating to prevent expansion of the
Si particles of the SiOx material. This reason to combine the teachings of the
references arises from the implicit teachings of the prior art. A teaching,
suggestion, or motivation to combine the relevant prior art teachings does
not have to be found explicitly in the prior art, as the teaching, suggestion, or
motivation may be implicit from the prior art as a whole. In re Kahn, 441
F.3d 977, 987-88, 78 USPQ2d 1329, 1336 cited with approval in KSR Int'l.
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1395-96
(2007). In evaluating the prior art references for a suggestion, it is proper to
take into account not only the specific teachings of the references, but also
any inferences which one skilled in the art would reasonably be expected to
draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
(CCPA 1968).
Umeno indicates that there is an expansion problem when the
electrode includes lithium alloying active material such as Si. Umeno solves
the problem by applying a carbon coating. Sakashita describes an electrode
with lithium alloying active material containing Si. It would have been
obvious to try applying the coating of Umeno on the active material of
Sakashita, the expectation being that the coating would enhance conductivity
and suppress expansion. As stated in KSR Int'l:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013