Beard, Kirby W. et al.

Patent Trials and Appeals Board

Feb 4, 2020

13419234 - (D) (P.T.A.B. Feb. 4, 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.
13/419,234 03/13/2012 Kirby W. Beard PNK1410US 1032
23413 7590 02/04/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SHAFI, LEITH S
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRBY W. BEARD and ANN M. EDWARDS
Appeal 2019–004036
Application 13/419,234
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–12, 14–16, and 18–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Samsung
Electronics Co. Appeal Br. 2.
Appeal 2019-004036
Application 13/419,234

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:

1. A method comprising:
forming a microporous membrane by a liquid casting
process using a solution comprising:
a polymer binder comprising PVDF;
a first filler material being a spherical filler material; and
a solvent dissolving the polymer binder;
said microporous membrane having a first manufactured
state having:
at least 50% porosity; and
at least 10% by volume of said first filler material based
on the total volume of the microporous membrane; and
post processing said microporous membrane having said
polymer binder and at least 10% by volume of said first filler
material based on the total volume of the microporous
membrane by bringing said polymer binder comprising PVDF
into at least a partially molten state for a sufficient time for the
polymer binder comprising PVDF to completely wet the first
filler material such that said polymer binder reforms after said
post processing such that said microporous membrane has a
second manufactured state being at least 50% porous and
having the first filler material dispersed within a pore wall of
said microporous membrane.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Funaoka et al. US 2005/0098913 Al May 12, 2005
Yeager et al. US 2008/0203012 Al Aug. 28, 2008
Hauser et al. US 2010/0178567 Al July 15, 2010

THE REJECTION
Claims 1–5, 7–12, 14–16, and 18–23 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hauser in view of Yeager and
Funaoka.
OPINION
We can focus on the claim limitation involving the post processing
step of claim 1 in making our determination herein.
We refer to the Examiner’s statement of the rejection as set forth on
pages 4–16 of the Answer. The Examiner relies upon Hauser for the
teachings set forth on page 4 of the Answer. On page 5 of the Answer, the
Examiner states that Hauser does not teach a post processing of the
microporous membrane by bringing said polymer binder into at least a
partially molten state for a sufficient time for the polymer binder to
completely wet the first filler material such that said polymer binder reforms
after said post processing such that said microporous membrane has a
second manufactured state being at least 50% porous and having the first
filler material disposed within a pore wall of said microporous membrane.
The Examiner relies upon Funaoka for teaching this aspect of the claimed
subject matter. Ans. 5–6. The Examiner concludes that it would have been
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obvious to have modified the microporous membrane forming process of
Hauser to incorporate the post processing step of Funaoka motivated by
controlling the pore size and porosity of the membrane only by changing the
temperature and time of the hot solvent treatment step, without changing the
overall process (Funaoka, ¶ [0056]) thereby simplifying the overall process
while maintaining control over important parameters. Ans. 6. The Examiner
also states that it would have been obvious to have modified the process of
Hauser to at least partially melt the microporous membrane for a sufficient
period of time as taught by Funaoka, motivated by improving permeability
and strength of the microporous membrane (Funaoka, ¶ [0053]). Ans. 6–7.
Appellant argues that there is no motivation to modify Hauser with
Funaoka because the pore size variation disclosed by Hauser is widely
different from the pore size distribution disclosed in Funaoka. Appeal Br.
7–13.
On pages 17–18 of the Answer, the Examiner responds and states:
Hauser discloses in [0094] that the membranes will function in a
symmetric manner and be sufficiently uniform where the pores vary in
diameter by a factor of about 5 or less. This teaching implies that any
membranes having a pore diameter variation of a factor of 5 or less
would not destroy the product desired by Hauser. Funaoka teaches
average pore size in the exterior of the membrane is 0.05 to 50
microns, preferably 1 to 30 microns and the average pore size in the
middle of the membrane is 0.01 to 30 microns, preferably 0.03 to 2
microns, where the pore size in exterior of the membrane is larger
than the pore size in the middle of the membrane. Within the ranges
described by Funaoka there are values in which the diameter of the
pores vary by a factor of 5 or less. Additionally, Example 5 of
Funaoka which is described in [0076] and Table 2, teaches a
microporous membrane which has been treated by the hot solvent and
has an average pore size in the front surface of 15 microns, an average
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pore size in the back surface of 14.8 microns, and an average pore size
in the middle section of 14.8 microns. This distribution of pore
size complies with the relative uniformity desired in Hauser, is treated
with the hot solvent, and has a second state with at least 50% porosity.
Thus, the combination of Hauser with Funaoka also does not destroy
the product desired by Hauser.

Beginning on page 3 of the Reply Brief, Appellants dispute the Examiner’s
response. Appellant argues that Hauser stresses the paramount importance
of uniformity in the membrane. Appellant refers to paragraph [0076] of
Hauser, wherein Hauser teaches that liquid removal must be performed
rapidly at a low temperature in order to produce a membrane withenhanced
uniformity. In particular, this paragraph discloses:
Rapid low temperature liquid removal, preferably using air flowing at
a temperature of about 80° C. and below, most preferably at about 60°
C. and below, without immersion of the membrane into another liquid
has been found to produce a membrane with enhanced uniformity.

Appellant submits that this particular teaching also teaches avoiding
immersion of the membrane into another liquid. Appellant submits that this
statement would dissuade one of ordinary skill from performing a second
solvent immersion step (from Funaoka) that the Examiner has proposed.
Reply Br. 3.
Appellant also argues that in paragraphs [0081], [0084] and [0094] of
Hauser, Hauser further stresses the thinness of the film with a view of
obtaining uniform pore sizes. Reply Br. 3. These paragraphs are reproduced
below:
[0081] In view of the thinness of the films, the temperature throughout
may be relatively uniform, though the outer surface may be slightly
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cooler than the bottom layer. Thermal uniformity may enable the
subsequent polymer precipitation to occur in a more uniform manner.

[0084] The interaction among the two liquids (with their different
surface tension characteristics) and the polymer (with a surface energy
intermediate the surface tensions of the liquids) may yield a
membrane with high porosity and relatively uniform pore
size throughout its thickness. The surface tension forces may act at the
interface between the liquids and the polymer to give uniformity to
the cell structure during the removal step. The resulting product may
be a solid polymeric membrane with relatively high porosity and
uniformity of pore size.

[0094] Some embodiments may be generally uniform and symmetric,
i.e. the substrate side pores may be substantially similar in size to the
central and the air side pores. Pores varying in diameter by a factor of
about 5 or less may be sufficiently uniform for the membranes to
function in a symmetric manner.

Appellant submit that the aforementioned teachings show that uniform
pore size is a very important feature for a membrane that is to be used as a
dielectric spacer in a battery. Hauser, ¶ [0002]. Reply Br. 3. Appellant
submits that the uniform distribution of pore sizes in the membrane permits
a uniform distribution of spacer fillers in the membrane thereby preventing
crushing of the membrane and preventing a fire. Hauser, ¶¶ [0002], [0011]
and [0012]. Reply Br. 3.
Appellant states that the Examiner has refuted these arguments by
stating that “within the ranges described by Funaoka, there are values in
which the diameter of the pores vary by a factor of 5 or less.” Ans. 17.
Reply Br. 4. Appellants argue that even if some of the pores of Funaoka lie
within the range prescribed by Hauser, the overall distribution of pore sizes
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lie far outside the range desired by Hauser. Appellant argues that the
Examiner relies upon Example 5 of Funaoka in support of his contention,
but this example does not include a partial melting of the polymer as is
presently claimed. Reply Br. 4. Appellant states that the instant claims
requires a partial melting of the polymeric binder. Appellant states that this
would require the polymeric binder to be at least temporarily elevated to a
temperature above its melting point so that some of the crystals would begin
to melt. Appellant points out that while Funaoka in paragraph [0053]
teaches that the solvent temperature is from the crystal dispersion
temperature to melting point plus 10°C of the polyolefin or
polyolefin composition, its examples are not conducted at above the melting
point of the polymer as presently claimed. Id. Appellant states that
Funaoka’s Example 5 was conducted below the melting point of the
ultrahigh molecular weight polyethylene. Appellant explains that Example 5
is similar to Example 3 except that it was treated with the hot solvent at
122°C for 10 seconds. Funaoka, ¶ [0076]. Appellant states that the
polyethylene of Example 3 had a melting point of 135°C. Appellant state
that Funaoka’s examples therefore do not conform to the instantly claimed
invention, which requires a partial melting of the membrane. Appellant
states that even if this example is indicative of uniformity, Appellants argue
that it does not meet the limitations of the instant claims. Appellant
concludes that the Examiner appears to have inadvertently misconstrued the
data. We agree and are thus persuaded by this line of argument.
Furthermore, Appellants point out that Table 1 of Funaoka displays
four examples (Example 1, Example 2, Comparative Example 1
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and Comparative Example 2). Reply Br. 4. Appellant states that it is worth
noting that Examples 1 and 2 exemplify Funaoka’s teachings, notably that of
a second immersion into a hot solvent, while Comparative Examples 1 and 2
exemplify the procedure disclosed by Hauser, i.e., they are not subjected to
the secondary hot solvent immersion. Appellant states that from Table 1, it is
shown that the Comparative Examples 1 and 2 show cell uniformity, while
Examples 1 and 2 both display wide variations in pore sizes. Appellant
submits that in addition to not desiring this second immersion into a solvent
because it produces non-uniform pore sizes (Hauser, ¶ [0076]), Hauser
clearly does not desire this variation in pore sizes. Reply Br. 5.
In view of the above, we are persuaded by Appellant’s arguments as
discussed above, and reverse the rejection.
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
1–5, 7–12,
14–16,
18–23
103 Hauser, Yeager,
Funaoka
1–5, 7–12,
14–16,
18–23

REVERSED