Ex Parte Bando et al

Patent Trial and Appeal Board

Aug 9, 2017

13565683 (P.T.A.B. Aug. 9, 2017)

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.
13/565,683 08/02/2012 Toshinori BANDO F2-12GSY1593(US) 5193
21254 7590 08/10/2017
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
KOROVINA, ANNA
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
08/10/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHINORI BANDO, YOSHIKATSU OHTANI,
and KAZUYA OKABE
Appeal 2016-007343
Application 13/565,6831
Technology Center 1700
Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER C. KENNEDY,
and DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) rejections of claims 1, 3—
5, and 15—30. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify GS Yuasa International Ltd. as the real party in
interest. Appeal Br. 1.
2 In our Opinion, we refer to the Specification filed August 2, 2012
(“Spec.”); the Final Action mailed August 26, 2015 (“Final Act.”); the
Appeal Brief filed December 15, 2015 (“Appeal Br.”); the Examiner’s
Answer mailed June 1, 2016 (“Ans.”); and the Reply Brief filed July 21,
2016 (“Reply Br.”).
Appeal 2016-007343
Application 13/565,683
The claims are directed to electrodes and batteries comprising
electrodes. Claim 1, reproduced below with the disputed limitation
emphasized, is illustrative of the claimed subject matter:
1. An electrode comprising:
an electrode plate in a band form that extends in a first direction
and in a second direction perpendicular to the first direction;
a conductive layer formed in a band form on the electrode plate;
and
an active material layer formed in a band form continuously on
a surface of the electrode plate and on the conductive layer,
wherein the electrode plate includes an uncoated region where a
surface of the electrode plate is exposed, the uncoated region being
located at an end of the electrode plate in the second direction and
extending in the first direction along an entire length of the electrode
plate,
wherein the active material layer includes an active material
layer spreading part adjacent the uncoated region, the active
material layer spreading part being formed along substantially the
entire length of the electrode plate,
wherein an edge of the active material layer spreading part
adjacent the uncoated region is located closer to the uncoated region
in the second direction than an edge of the conductive layer closest to
the uncoated region, and
wherein the electrode further comprises a short-circuiting
prevention layer which is formed on the electrode plate between the
active material layer spreading part and the uncoated region, and has a
thickness which is less than a thickness of the active material layer.
Appeal Br. 44 (Claims App’x).
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Appeal 2016-007343
Application 13/565,683
REFERENCES
The Examiner relies
appeal:
on the following prior art in rejecting the claims
Yamashita et al.
(“Yamashita”)
US 6,387,564 B1 May 14, 2002
Dudley et al.
(“Dudley”)
US 2002/0197535 Al Dec. 26, 2002
Wilkins et al.
(“Wilkins”)
US 2010/0075225 Al Mar. 25, 2010
Morishima et al.
(“Morishima”)
US 2010/0081052 Al Apr. 1,2010
Shibuya et al.
(“Shibuya”)
JP 11-354103 Dec. 24, 1998
Sakamoto WO 2010/084622 July 29, 20103
Appellants rely for evidence on Hinoki et al., EP 1699062 Al,
published Sept. 6, 2006 (“EP 1699062”).
REJECTIONS
Claim 28 is rejected by the Examiner under 35 U.S.C. § 112(b) for
being indefinite. Final Act. 8. Claims are rejected by the Examiner under
35 U.S.C. § 103(a) as follows: (1) claims 1, 3, 4, 15—17, 20—25, and 29 over
Sakamoto and Dudley; (2) claim 5 over Sakamoto and Dudley in view of
Shibuya; (3) claims 18 and 19 over Sakamoto and Dudley in view of
Wilkins; (4) claims 26—28 over Sakamoto, Dudley, Shibuya, and Morishima;
(5) claim 30 over Sakamoto and Dudley in view of Yamashita. Id. at 8, 15—
17, and 24. Appellants seek our review of these rejections. Appeal Br. 2.
3 The Examiner uses Sakamoto US 8,586,239 B2 as an English language
translation for Sakamoto WO 2010/084622 without objection by Appellants.
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Appeal 2016-007343
Application 13/565,683
OPINION
Rejection of claim 28 as indefinite
Claim 28 depends from indirectly from claim 26. The Examiner finds
that claim 28 is indefinite in reciting “athickness of the short-circuiting
prevention layer,” because claim 26 recites a similar recitation, “the short-
circuiting prevention layer . . . including a thickness which is less than a
thickness of the active material layer.” Final Act. 8 (emphasis added). The
Examiner finds that the short-circuiting prevention layer can have a
thickness in the width direction (i.e., across the face of the electrode from
one edge of the uncoated electrode to the other), and a separate thickness in
the vertical direction (i.e. between the outermost surfaces of the active
material layers). Id. The Examiner therefore finds that it is unclear whether
the thickness of the short-circuiting prevention layer in claim 28 is the same
as the thickness in the short circuiting prevention layer in claim 26. Id. In
the Answer, the Examiner further finds that the limitation “a thickness of the
active material layer” is recited in both claim 26 and claim 28, and it is
unclear if the limitations are to the same thickness. Id. The Examiner states
that, if the limitations to thickness in claim 28 are the same as the limitations
to thickness in claim 26, then claim 28 must read “the thickness,” rather than
“a thickness.” Id.
Appellants argue that claims must be read in view of the specification,
and claim terms should be given the meaning that the term would have to a
person of ordinary skill in the art. Appeal Br. 21 (citing Phillips v. A WH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)). According to Appellants,
“the term ‘thickness’ at all times in the specification refers to a direction
orthogonal to a surface of the electrode plate 22.” Id. at 21—22. Appellants
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Application 13/565,683
further contend that no person of ordinary skill in the art would use the term
“thickness” in this context to refer to a “width direction.” Id. at 22.
Claim drafting tenets would have claim 28 recite “the thickness” of
the active material layer and of the short-circuiting prevention layer, which
would indicate that the “thickness” of claim 28 is the same as the
“thickness” of claim 26. Appellants persuasively argue, however, that there
are other reasons for concluding that both claims refer to the same
“thickness,” rather than two different thicknesses as the Examiner finds. See
Appeal Br. 21—22; Reply Br. 1—2. We conclude that claim 28, in view of the
Specification, prior art, and interpretation by one of ordinary skill in the art
at the time of the invention, “reasonably apprises those of skill in the art of
its scope.” See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
We do not sustain the Examiner’s rejection of claim 28 as indefinite.
Rejection of claims 1, 3, 4, 15—17, 20—25, and 29 as obvious over
Sakamoto in view of Dudley
The Examiner uses two different interpretations of Sakamoto in
finding independent claims 1 and 22 obvious. Ans. 28—35. In the first
interpretation, the Examiner finds that Sakamoto teaches the entire surface
of the conductive layer is covered by the active material, and, merging two
figures from Sakamoto, then interprets the reference as teaching that the top
surface and side surfaces of the conductive layer are covered by the active
material layer. Final Act. 11; Ans. 32. The Examiner’s merged Annotated
Figure 3ii is reproduced below:
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Appeal 2016-007343
Application 13/565,683
| Anrxsasad ria 3ii • amire syriaes at (he soaduetive iayer is covered Sy the active maiersi.
Annotated Figure 3ii, created by the Examiner, shows the top surface
and side surfaces of the conductive layer covered by the active material layer
in the Examiner’s first interpretation of Sakamoto. Final Act. 11.
The Examiner finds that the active material spreading part is inherent
in Sakamoto. Final Act. 12.
Appellants argue that Sakamoto discloses “part of the active material
layers [] are provided extending up to portion where the conductive layers []
are not formed,” which does not teach or suggest that the active material
layer includes a part that spreads beyond the position of the conductive
layer. Appeal Br. 27. Appellants also argue that Sakamoto does not
inherently disclose the claimed active layer material spreading part based on,
inter alia, Sakamoto’s disclosure that the active material layers are formed
“so as to cover substantially the entire surface of at least the conductive
layers [].” Id. (citing Sakamoto col. 12,11. 26—28).
“Inherency . . . may not be established by probabilities or
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). “In relying upon the theory of inherency, the Examiner must provide
a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
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Application 13/565,683
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (citing In re King, 801 F.2d 1324, (Fed. Cir. 1986);
W.L. Gore &Assocs, Inv. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983);
In re Oelrich, 666 F.2d 578 (CCPA 1981); In re Wilding, 535 F.2d 631
(CCPA 1976); and Hansgirg v. Kemmer, 102 F.2d 212 (CCPA 1939).
The Examiner has not met the burden of showing that an active
material layer spreading part is inherent in Sakamoto. Because Sakamoto
teaches the active material layer (1) extends up to the portion where the
conductive layer is formed, and (2) substantially covers the entire surface of
the conductive layer (Sakamoto col. 12,11. 26—39), the reference does not
explicitly or inherently disclose the active material layer spreading part
required by claims 1 and 22.
The Examiner’s first interpretation of the prior art fails to support
rejection of claims 1 and 22, as the claimed active material layer spreading
part is absent from the combined references.
In the second interpretation, the Examiner finds that Sakamoto teaches
active material on the top surface of the conductive layer, but not on the side
surfaces. Ans. 33—34. The Examiner finds that the active layer material
spreading part would have been obvious in view of Dudley. Id. The
Examiner finds that Dudley teaches active material layer (2) with tapered
edge (8). Ans. 34. Figure 1 of Dudley is reproduced below:
20
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Application 13/565,683
Figure 1 of Dudley is a side view illustration of a typical coating of a
coating material having a tapered edge. Dudley 123.
Appellants argue that Dudley simply teaches a coating material (2)
formed on a substrate (4), and does not teach a conductive layer at all.
Reply Br. 5.
Although Dudley teaches tapering the edge of active material layer
(2), it does not teach extending the edge of that layer beyond the edge of a
lower layer. See Dudley Fig. 1. Combining the teachings of Sakamoto and
Dudley as the Examiner suggests would result in a structure in which the top
surface of the conductive layer of Sakamoto is covered by a tapered edge
layer of Dudley, but there is insufficient support for the Examiner’s finding
that Dudley’s tapered edge would spread beyond the top surface of
Sakamoto’s conductive layer. Therefore, the “spreading part” of the active
material layer of the claims is not taught by the combined references.
The Examiner’s second interpretation of the prior art also fails to
support rejection of claims 1 and 22, as the claimed active material layer
spreading part is absent from the combined references.
We do not sustain the Examiner’s rejection of independent claims 1
and 22. We also do not sustain the rejection of the respective dependent
claims 3, 4, 15—17, 20, 21, 23—25, and 29 over Sakamoto in view of Dudley
for the reasons given above.
Rejection of claims 26—28 as obvious over Sakamoto, Dudley,
Shibuya, and Morishima
Independent claim 26 requires an active material layer formed on the
conductive layer and on a surface of the electrode plate which is between the
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Application 13/565,683
conductive layer and the exposed surface of the electrode. Appeal Br. 47
(Claims App’x).
As with claim 1, the Examiner finds that Sakamoto teaches an active
material layer covers the top and sides of the conductive layer. Final Act.
20. The Examiner’s analysis as to the active material “between the
conductive layer and the exposed surface of the electrode” is the same as the
analysis for the “active material spreading part” for claim 1 discussed above.
Id.
Appellants refer to their arguments made with respect to claims 1 and
22 regarding the teachings of Sakamoto and Dudley. Appeal Br. 40-41.
We do not sustain the Examiner’s rejection of claims 26—28 for the
reasons given, supra, why Sakamoto, with or without Dudley, does not
disclose “an active material layer formed on the conductive layer and of a
surface of the conductive layer which is between the conductive layer and
the exposed surface of the electrode.”
Rejection of claims 5, 18, 19, and 30 as obvious over Sakamoto and
Dudley combined with other references
Claims 5, 18, 19, and 30 depend directly or indirectly from claim 1.
The additional references cited by the Examiner for rejection of these claims
do not remedy the failure of Sakamoto and Dudley to show the claimed
active layer material spreading part of claim 1. Therefore, we do not sustain
the rejections of claims 5, 18, 19, and 30.
The Examiner reversibly erred in concluding that claims 1, 3—5, and
15—30 are obvious. The Examiner also reversibly erred in finding claim 28
indefinite.
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Appeal 2016-007343
Application 13/565,683
DECISION
For the above reasons, the Examiner’s rejections of claims 1, 3—5, and
15—30 are reversed.
REVERSED
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