Ex Parte Jeong

Patent Trial and Appeal Board

Apr 22, 2016

12010868 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/010,868 01/30/2008
8439 7590 04/26/2016
ROBERT E BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, DC 20006-1004
FIRST NAMED INVENTOR
Dong-Ho Jeong
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.
P58442 1076
EXAMINER
GILLIAM, BARBARA LEE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
rebushnell@aol.com
mail@rebushnell.com
info@rebushnell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG-HO JEONG
Appeal2013-010684
Application 12/010,868
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52
seeking reconsideration of our Decision dated February 10, 2016, in which
we affirmed the Examiner's rejection of claims 1-3, 5-7, 15-17, 19, and 20.
We DENY the Request.
ANALYSIS
A Request for Rehearing "must state with particularity the points
believed to have been misapprehended or overlooked by the Board." 37
C.F.R. § 41.52(a). It may not rely upon new evidence or new arguments
except as permitted by§ 41.52 paragraphs (a)(2) though (a)(4). Id. A
Request for Rehearing is not an opportunity to rehash arguments raised in
Appeal2013-010684
Application 12/010,868
the Appeal Brief. Mere disagreement with the Board's Decision is not a
proper basis for rehearing.
The Appellant has not persuasively identified any points that were
misapprehended or overlooked by the original Decision that resulted in
error. Much of the Request consists of repetition of, or elaboration on,
arguments raised in the Appeal Brief. See generally Request 6-18. We
decline to revisit those arguments. However, below we address certain
points raised in the Request:
1. The Appellant argues that, rather than applying a preponderance of
the evidence standard, the Board has required the Appellant to prove facts
"with certainty" or "unequivocally." E.g., id. at 6-8. We disagree. As set
forth in the Original Decision, see Decision 3, the Examiner found that it
would have been obvious to modify the electrode of Omori, which possesses
the structure of the electrode of claim 1, so that the coated and uncoated
portions of its current collector have the Vicker' s hardness values taught by
Takayuki "because this would prevent breaking by charging and
discharging, and achieve high capacity and high reliability of the battery,"
Ans. 4. The Appellant does not dispute that the Vicker's hardness ratio
range taught by Takayuki is 1.2 (i.e., 60/50) to 3.33 (i.e., 100/30). Nor does
the Appellant dispute that Takayuki's Vicker's hardness ratio range overlaps
the claimed yield stress ratio range of 1. 5 to 7. Thus, the electrode of Omori
as modified by Takayuki possesses the structure recited by claim 1 and
possesses a Vicker' s hardness ratio range of 1.2 to 3 .33 for the relevant
portions of the current collector.
Relying on Tabor, the Examiner found that a Vicker's hardness ratio
range of 1.2 to 3.33 equates to a yield stress ratio range that at least partially
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overlaps the claimed range of 1. 5 to 7. See Ans. 5-7; Advisory Action dated
January 2, 2013, at 2 i-f 3. Tabor teaches that, "[fJor metals which do not
work-harden appreciably, the hardness value for ... the Vickers indenter is
approximately three times the yield stress." Tabor at 17. Other evidence of
record is consistent with the Examiner's finding that a Vicker's hardness
ratio range of 1.2 to 3.33 equates to a yield stress ratio range that at least
partially overlaps the claimed range of 1.5 to 7. E.g., Cahoon at Table I and
Examiner's plot of data attached to Advisory Action dated January 2, 2013;
Pavlina at 888 ("Yield strength shows a clear linear relationship with the
diamond pyramid hardness for the entire strength range.").
We have not required "any one piece of evidence in isolation to
establish that the Vicker' s hardness of copper foil is not proportional to the
yield stress of copper foil." See Request 7. Nor have we required the
Appellant to "unequivocally" establish any particular fact, id. at 7, 8, or to
establish any particular fact "with certainty," id. at 6. We have considered
all of the evidence relied upon by the Appellant, and, for the reasons set
forth in the Original Decision, see Decision 2-12, we remain persuaded that
a preponderance of the evidence supports the Examiner's finding that
Vicker's hardness is sufficiently proportional to yield stress that the Vicker's
hardness ratio range of Omori as modified by Takayuki at least partially
overlaps the claimed range. The record does not establish that any
deviations from linearity of the Vicker's hardness/yield stress relationship
would be so great as to remove the electrode of Omori as modified by
Takayuki from the scope of claim 1. See Decision 8-9. Nor does the record
establish that Vicker' s hardness and yield stress are not proportional for
metal foils of the same (or approximately the same) thickness. See id. at 9-
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Application 12/010,868
11. Accordingly, we maintain the conclusion that claim 1 would have been
obvious over Omori in view of Takayuki.
2. The Appellant appears to suggest that the motivation to combine
Omori with Takayuki is contingent on whether a person of ordinary skill in
the art would have understood Vicker' s hardness to be proportional to yield
stress. See Request 7 ("This is part of the presented collection of evidence
that would have discouraged one of skill in the art from modifying Omori
with Takayuki .... "). That is incorrect. The Examiner found that a person
of ordinary skill would have been motivated to combine Omori with
Takayuki "because this would prevent breaking by charging and
discharging, and achieve high capacity and high reliability of the battery."
Ans. 4; see also Takayuki 1 i-fi-1 7-9 (noting problem of cracking and
weakness in portions of electrode charge collector). The Appellant has not
provided a basis to reject that finding. See, e.g., Reply Br. 16 (agreeing that
"the combination of Omori with Takayuki suggests annealing the edges of a
battery current collector in order to avoid failure such as cracking.").
3. The Appellant argues that In re Spada, 911 F.2d 705 (Fed. Cir.
1990) does not apply. Request 10-11. While we maintain that case law
such as Spada and In re Best, 562 F.2d 1252, 1255 (CCPA 1977) is
instructive in this case, we reach the same result regardless of whether the
issue is framed as one of inherency. As explained above and in the Original
Decision, evidence directly supports the Examiner's finding that Vicker's
hardness and yield stress are proportional for the metals of Omori and
1 Citations to Takayuki in both the Original Decision and in this Decision on
Rehearing are to the English translation of record. E.g., Office Action
Response dated June 16, 2011 (attaching machine translation of Takayuki).
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Application 12/010,868
Takayuki. E.g., Decision 6-7. While portions of that evidence indicate that
the relationship may deviate from linearity under certain circumstances, the
evidence does not suggest that deviations would be so great as to cause
Takayuki's ratio range of 1.2 to 3.33 to lose its overlap with the claimed
ratio range of 1.5 to 7. See Decision 7-9.
The other series of references relied on by the Appellant relates to
whether the properties of bulk metals apply to thin metal foils. E.g., App.
Br. 18 et seq. As explained by the Examiner and in the Original Decision,
those references do not directly address the question of whether Vicker' s
hardness is proportional to yield stress when measurements are taken on thin
metal foils of approximately the same thickness. Ans. 7; Decision 9-12.
Thus, they do not persuasively show that the Vicker's hardness ratio range
of Omori as modified by Takayuki does not correspond to a yield stress ratio
range that overlaps the range of claim 1.
Having evaluated all of the evidence, we concluded-and we continue
to conclude-that "a preponderance of the evidence supports the Examiner's
finding that, for the compositions of Omori and Takayuki, Vicker' s hardness
is sufficiently proportional to yield stress that a Vicker' s hardness ratio
[range] of 1.2 to 3.33 equates to a yield stress ratio [range] that at least
partially overlaps the claimed range of 1.5 to 7." Id. at 11-12. That
conclusion stands regardless of whether or not the framework of cases such
as Best and Spada is applied.
4. The Appellant submits a PDF copy of the Instron web page for
which only a broken web address was previously submitted. See Request
15; see also Decision 9. We do not consider the submission of that evidence
to be timely. See 37 C.F.R. § 41.52(a). Even ifit were timely, it fails to
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show that the Board misapprehended or overlooked any points in the
Original Decision. See Decision 9.
CONCLUSION
The Appellant's request has been granted to the extent that the
Decision has been reconsidered, but, for the reasons set forth above, the
request is DENIED with regard to modifying the result of the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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