Ex Parte Fukuoka et al - Page 7

                Appeal 2007-1118                                                                             
                Application 10/237,089                                                                       

                SiOx (x=1.05-1.60), i.e., the material is ultimately selected to alloy with, or              
                absorb, lithium ions (Answer 7).                                                             
                      Second, there are several bases for one of ordinary skill in the art to                
                have been led to combine the coating of Umeno with the particles of                          
                Sakashita that arise from benefits taught by Umeno any one of which would                    
                have been sufficient to support the prima facie case of obviousness.  Umeno                  
                articulates several benefits to using a carbon coating that one of ordinary                  
                skill in the art would have expected to obtain when the coating were placed                  
                on Sakashita’s SiOx (x=1.05-160) particles including suppression of                          
                expansion during lithium ion alloying, prevention of further oxidation during                
                charging and discharging, and improvement in conductivity.  Umeno’s                          
                disclosure of conductivity improvement provides a strong reason to combine                   
                because Sakashita expressly teaches that conductivity improvement is                         
                desirable as noted in the above findings of fact.  Thus, an ordinarily skilled               
                artisan would have expected that Umeno’s carbon coating would be suitable                    
                as an additive source of conductive carbon or as a substitution of a carbon                  
                source for use in Sakashita’s conductive electrode.  Another reason for                      
                making the combination arises from the expected added benefit of                             
                suppressing any expansion that might occur when Sakashita’s SiOx (x=1.05-                    
                160) particles, or the Si particles therein, absorb lithium ions.  Umeno                     
                teaches that the expansion inhibiting carbon coating will prevent the                        
                powderization and destruction of the anode and improve cycle properties                      
                (Factual findings above).                                                                    
                      With regard to the benefit of suppressing expansion, it is reasonable to               
                conclude that because the SiOx of Sakashita stores lithium ions, one of                      


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