Ex Parte Hojo

Patent Trial and Appeal Board

Sep 27, 2018

13133428 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/133,428 06/08/2011 Katsuyuki Hojo
22852 7590 10/01/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04739.0101-00000 3208
EXAMINER
VO,JIMMY
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA TSUYUKI ROJO
Appeal 2017-011562
Application 13/133,428
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and MONTE T. SQUIRE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1-5.3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed June 8, 2011,
as amended January 22, 2015 ("Spec."); Final Office Action dated August 2,
2016 ("Final Act."); Appeal Brief filed March 13, 2017 ("Appeal Br.");
Examiner's Answer dated July 17, 2017 ("Ans."); and Reply Brief filed
September 15, 2017 ("Reply Br.").
2 Appellant is Applicant, Toyota Jidosha Kabushiki Kaisha, which,
according to the Appeal Brief, is also identified as the real party in interest.
Appeal Br. 3.
3 Claims 6--10 are withdrawn and not before us on appeal. Final Act. 1-2.
Appeal 2017-011562
Application 13/133,428
The Claimed Invention
Appellant's disclosure relates to a processing device for a nonaqueous
electrolyte secondary battery which, according to the Specification, is
capable of melting and diffusing metallic foreign bodies immixed in the
nonaqueous electrolyte secondary battery before initially charging the
battery. Spec. 4; Abstract.
Claim 1, the only independent claim, is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief (Appeal Br. 13) (key disputed claim language italicized
and bolded):
1. A processing device for a nonaqueous electrolyte
secondary battery having electrodes accommodated
together with a nonaqueous electrolyte in a battery case,
the electrodes including a cathode plate and an anode
plate arranged on opposite sides of a separator, for
melting and diffusing metallic foreign bodies immixed in
the electrodes, the processing device comprising:
a space reducing unit for reducing a space in the
uncharged electrodes, to thereby place the nonaqueous
electrolyte secondary battery in a space-reduced state;
and
a holding unit for electrically holding a cathode
potential at a melting potential of the metallic foreign
bodies for a predetermined period of time in the space-
reduced state, the melting potential of the metallic
foreign bodies being lower than a charge-discharge
cathode potential for use in charging and discharging the
nonaqueous electrolyte secondary battery, to thereby
melt and diffuse metallic foreign bodies immixed in the
electrodes which have not yet been charged,
wherein the space reducing unit includes a
pressing mechanism to apply surface pressure to a
plurality of nonaqueous electrolyte secondary batteries,
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Application 13/133,428
and the holding unit includes a maintaining mechanism
to maintain the state in which the surface pressure is
applied to the plurality of nonaqueous electrolyte
secondary batteries.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Selinko
Makino
Yokoyama
us 4,020,244
JP411339853A
JP2006086060A
The Rejections
Apr. 26, 1977
Dec. 10, 1999
Mar. 30, 2006
On appeal, the Examiner maintains (Ans. 10) the following rejections:
1. Claims 1-3 and 5 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Makino4 in view of Selinko
("Rejection 1 "). Ans. 10.
2. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Makino in view of Selinko, as applied to claim 2 above,
and further in view ofYokoyama5 ("Rejection 2"). Ans. 15.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
4 For both Rejections 1 and 2, the Examiner cites and refers to the English
machine translation of the Makino reference, to which Appellant does not
object.
5 For Rejection 2, the Examiner cites and refers to the English machine
translation of the Yokoyama reference, to which Appellant does not object.
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Application 13/133,428
rejections based on the fact finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We highlight and
address specific findings and arguments below for emphasis.
Reiection 1
Appellant argues claims 1-3 and 5 as a group. Appeal Br. 8. We
select independent claim 1 as representative and the remaining claims
subject to this rejection stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determines that the combination of Makino and Selinko
suggests a device satisfying all of the limitations of claim 1 and thus,
concludes that the combination would have rendered the claimed apparatus
obvious. Ans. 10-14 (citing Makino, Abstract, ,r,r 12, 18, 21, 23, 28, 47,
Fig. 1; Selinko, Abstract, col. 1, 11. 8-21 ). In particular, the Examiner finds
that Makino discloses a plate press device comprising flat plates 5 that
perform press processes wherein a nonaqueous electrolyte battery (battery
case 2) is placed in a location between the flat plates 5 and a pressing
mechanism (iron plate) applies surface pressure to the nonaqueous
electrolyte battery. Id. at 10-13 (citing Makino ,r,r 12, 18, 21, 23, 28, 47,
Fig. 1).
The Examiner finds that although Makino discloses a plate press
device applied to a single battery, the reference does not explicitly disclose
applying the device to a plurality of nonaqueous electrolyte secondary
batteries. Ans. 13. The Examiner, however, relies on Selinko for teaching
or suggesting this missing limitation. Id. at 13. In particular, the Examiner
finds that Selinko discloses a clamping structure that holds a plurality of
cells together. Id. at 13 ( citing Selinko, Abstract, col. 1, 11. 8-21 ).
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Application 13/133,428
The Examiner concludes that
[i]t would have been obvious to a person skilled in the art at the
time of the invention to incorporate the press process of Makino
to a plurality of batteries as taught by Selinko, because Selinko
teaches a clamping process is applicable to a plurality of cells
as to prevent deformation from gas expansion ... [ and] this
allows for efficient use of time and resource[ s] by preventing
deformation to multiple cell[ s] at once instead of performing
the press process on one cell at a time.
Id. at 13-14.
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness because the combination of Makino and Selinko
does not teach or suggest the "space reducing unit" recitation of claim 1.
Appeal Br. 9. See also Reply Br. 1-2. Appellant contends that Makino
teaches away from "a space reducing unit for reducing a space in the
uncharged electrodes" because Makino teaches that the plates 5 perform the
pressing process on the group of electrodes after the initial charging, but that
claim 1 requires performing the pressing process prior to the initial charging
of the group of electrodes. Appeal Br. 9-10.
We do not find Appellant's argument persuasive of reversible error in
the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at pages 10-14 and 17-18 of the Answer. In particular, we
agree with the Examiner's determination that claim 1 is a product claim and
the recitation "for reducing a space in the uncharged electrodes" is a
functional/intended use limitation that does not distinguish Appellant's
claimed device over the prior art.
"[ A Jpparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends
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on the claimed structure, not on the use or purpose of that structure, Catalina
Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), or the function or result of that structure. In re Danly, 263 F.2d 844,
848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1949).
Although "[a] patent applicant is free to recite features of an apparatus either
structurally or functionally[,] .... choosing to define an element
functionally, i.e., by what it does, carries with it a risk. ... [that the Patent
Office may] "require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on." In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner
establishes a reasonable belief that a property or characteristic recited in the
claims would have been inherent to the apparatus, the burden of proof shifts
to Appellant to show that this characteristic or property is not possessed by
the prior art. Id.
As the Examiner finds (Ans. 10-12), Makino discloses a device
comprising flat plates 5 that perform the press process on a nonaqueous
electrolyte battery (battery case 2) placed in a location between the flat
plates 5. Makino, Abstract, ,r,r 12, 18, 21, 23, 28, 47, Fig. 1. Appellant has
not provided any evidence or persuasive technical reasoning to refute the
Examiner's factual findings and reasonable determination that Makino's
device performs or would have been capable of performing the claimed
functional limitation, i.e., reducing a space in the uncharged electrodes.
Appellant argues that the Examiner rejection should be reversed
because the Examiner has failed to show that Makino teaches or suggests the
"holding unit" recitation of claim 1. Appeal Br. 9. See also Reply Br. 2--4.
In particular, Appellant contends that the Examiner has not given proper
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patentable weight to the recitation "a holding unit for electrically holding a
cathode potential at a melting potential of the metallic foreign bodies ... to
thereby melt and diffuse metallic foreign bodies immixed in the electrodes
which have not yet been charged." Appeal Br. 10-11. Appellant contends
that "the process in Makino is not functionally or structurally the same as the
claimed 'holding unit' because it does not include the features "required in
order to melt and diffuse metallic foreign bodies immixed in the electrodes,
which have not yet been charged." Id. at 11.
We do not find Appellant's arguments regarding the "holding unit"
recitation of claim 1 persuasive of reversible error in the Examiner's
rejection for the reasons provided by the Examiner at pages 18-19 of the
Answer and similar to those previously discussed above regarding the
"space reducing unit" recitation of the claim. As the Examiner finds (Ans.
18), the claim language referring to "metallic foreign bodies" and, in
particular, the recitation "to thereby melt and diffuse metallic foreign bodies
immixed in the electrodes which have not yet been charged" are functional
limitations that do not patentably distinguish the claimed structure from the
prior art. As the Examiner finds (Ans. 18), the claim language merely refers
to the holding unit being capable of holding a melting potential of the
metallic foreign bodies. As the Examiner explains (Ans. 18), because
Makino discloses that the electrode is charged (Makino ,r 21) and
Appellant's Specification discloses (see Spec. ,r,r 11, 15) that the melting
potential is lower than the charge-discharge potential for use in charging and
discharging the battery, it follows that the charging potential would be
capable of melting and diffusing the metallic foreign bodies mixed in the
electrode composition.
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Appellant does not direct us to persuasive evidence or technical
reasoning sufficient to rebut the Examiner's determination that Makino's
device would have been capable of melting and diffusing metallic foreign
bodies immixed in the electrodes in the manner claimed. Schreiber, 128
F.3d at 1478. Appellant's assertion that "the process in Makino is not
functionally or structurally the same as the claimed 'holding unit"' (Appeal
Br. 11) is not persuasive because it is merely conclusory. Attorney
argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Accordingly, we affirm the Examiner's rejection of claims 1-3 and 5
under 35 U.S.C. § 103(a) as obvious over the combination of Makino and
Selinko.
Reiection 2
In response to the Examiner's rejection of claim 4 under
35 U.S.C. § 103(a) as obvious over the combination of Makino, Selinko, and
Yokoyama (Rejection 2, stated above), Appellant does not present any new
substantive arguments and, instead, relies on the same arguments previously
presented above in response to the Examiner's rejection of claim 1
(Rejection 1, stated above). Appeal Br. 12; Reply Br. 4 (arguing the
dependent claims "are patentably distinguishable from Makino, Selinko, and
Yokoyama for at least the same reasons as independent claim 1 ").
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming the
Examiner's Rejection 1, we affirm the Examiner's Rejection 2.
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DECISION/ORDER
The Examiner's rejections of claims 1-5 are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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