Ex Parte Yang et al - Page 9

                Appeal 2007-1524                                                                              
                Application 09/770,725                                                                        
           1                 lithium transition metal compound oxide, and to clarify the                      
           2                 difference in the respective amounts of transition metal                         
           3                 dissolved into electrolyte solution between lithium nickel oxide                 
           4                 and lithium manganese oxide.”  (Declaration 2.)                                  
           5          26. Applicants do not rely on any evidence to demonstrate that                          
           6                 variations in the composition of the lithium oxide positive                      
           7                 electrode material significantly affect absorption and release of                
           8                 water (i.e., that the variations in the composition of the lithium               
           9                 oxide positive electrode material are critical to whether water                  
          10                 detrimentally affects the characteristics of the battery).                       
          11          27. Applicants do not assert, much less rely on evidence to show,                       
          12                 that one of ordinary skill in the art would not have expected that               
          13                 moisture would cause problems in the type of battery described                   
          14                 in Takami.                                                                       
          15                                                                                                  
          16                              PRINCIPLES OF LAW                                                   
          17          The factual inquiry into whether claimed subject matter would have                      
          18    been obvious includes a determination of: (1) the scope and content of the                    
          19    prior art; (2) the differences between the claimed subject matter and the prior               
          20    art; (3) the level of ordinary skill in the art; and (4) secondary consideration              
          21    (e.g., the problem solved) that may be indicia of (non)obviousness.  Graham                   
          22    v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).  The Supreme                      
          23    Court of the United States has stated that “[t]he obviousness analysis cannot                 
          24    be confined by a formalistic conception of the words teaching, suggestion,                    
          25    and motivation, or by overemphasis on the importance of published articles                    
          26    and the explicit content of issued patents.”  KSR Int’l Co. v. Teleflex, Inc.,                

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