Ex Parte Nishikawa

Patent Trial and Appeal Board

Apr 29, 2016

13046802 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/046,802 03/14/2011
23373 7590 05/03/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Satoshi NISHIKAWA
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.
Ql21329 5653
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI NISHIKAWA
Appeal2014-005503
Application 13/046,802
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and GEORGE C. BEST,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-12 of Application 13/046,802
under 35 U.S.C. § 103(a) as obvious. Final Act. (May 15, 2013). Appellant1
seeks reversal of this rejection pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Teijin Limited is identified as the real party in interest. Appeal Br. 2.
Appeal2014-005503
Application 13/046,802
BACKGROUND
The '802 Application describes a separator for use in a non-aqueous
secondary battery. Spec. iJ 2. In particular, a separator for use in a lithium-
ion battery is described. Id.
Claim 2 is representative of the '802 Application's claims and is
reproduced below from the Claims Appendix of the Appeal Brief:
2. A separator for [a] non-aqueous secondary battery,
comprising a microporous film mainly comprising
polyethylene, and heat-resistant porous layers formed on both
surfaces of the microporous film, each heat-resistant porous
layer mainly comprising at least one heat-resistant polymer
selected from the group consisting of a wholly aromatic
polyamide, a polyimide, a polyamideimide, a polysulfone, and
a polyether sulfone,
(1) wherein the microporous film has a Gurley value
per unit thickness of 25 to 35 sec/100 cc·µm,
(2) wherein the microporous film has a thickness of 7
to 16 µm,
(3) wherein the heat-resistant polymer is present in a
coating weight of 2 to 3 g/m2,
(4) wherein the total thickness of the heat-resistant
porous layers is 3 to 7 µm,
(5) wherein the heat-resistant porous layers have a
porosity of 40 to 60%, and
( 6) wherein, when the shutdown characteristics are
evaluated, the resistance is 1.0 x 104 ohm·cm2 or more at 150 to
190°C.
Appeal Br. 13-14 (Claims App.).
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Appeal2014-005503
Application 13/046,802
REJECTION
Claims 1-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ohno2 and Takami.3 Final Act. 2.
DISCUSSION
Appellant's arguments for reversal of the rejection of claims 1-12 can
be divided into two groups: (1) arguments that pertain to the rejection of all
of the claims, Appeal Br. 6-9, and (2) arguments that are limited to
independent claim 2 and claims 8-12, which depend from claim 2, id. at 9-
10. We shall address each group of arguments separately.
First, Appellant argues that a separator for a non-aqueous secondary
battery having the claimed Gurley value per unit thickness and coating
weight of the heat-resistant polymer provides unexpected results relative to
the separator suggested by the combination of Ohno and Takami. See id. at
7-9.
In rejecting claims 1-12, the Examiner found that Ohno discloses a
separator for a non-nonaqueous secondary battery comprising a microporous
membrane of primarily polyethylene and a heat-resistant porous layer of
polymetaphenylene isophthalamide (PMIA). Answer 2 (citing Ohno ,-i,-i 21-
24, 90, 182). The Examiner found that Ohno does not expressly describe a
microporous polyethylene membrane having a Gurley number per unit
thickness claimed by the Appellant. Id. at 3--4. The Examiner, however,
also found that Takami describes a microporous polyethylene membrane
2 US 2004/0161598Al, published August 19, 2004.
3 US 6,544,682 Bl, issued April 8, 2003.
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Appeal2014-005503
Application 13/046,802
with a Gurley number between 150 and 400 sec/100 cc. Based upon the
thickness of the polyethylene membrane described in Takami, the Examiner
calculated that Takami describes a membrane having a Gurley number per
unit thickness of 3-80 sec/100 cc· µm. 4 Id. Appellant's claims are limited to
polyethylene membranes having a Gurley value per unit thickness of 25-35
sec/100 cc·µm. Because the range disclosed in the prior art encompasses the
claimed range, the claimed range is prima facie obvious. In re Harris, 409
F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (same).
The Examiner also found that the coating weight of Ohno's heat-
resistant porous layer would intrinsically be in the same range claimed by
Appellant because Ohno describes its heat-resistant porous layer as having a
thickness and porosity that is within the range prescribed by the Appellant.
T 7 • ,..,, A. "I "I • • .:::; •"I • LL• "I "I "I • "I • • • "I • r'" '"""I • 1a. at j_ Appeuam assens~ mat --me ca1cmatea coanng we1gm or unno 1s
4 We note that the Examiner appears to have made an arithmetic error in
calculating the lower bound for the Gurley value per unit thickness of the
polyethylene membrane described in Takami. We calculate that Takami's
membrane has a Gurley value per unit thickness of 5-80 sec/100 cc· µm.
(Takami's membrane has a Gurley number of 150-400 sec/100 cc and a
thickness of 5-30 µm.) Appellant, however, does not raise this error in the
Appeal Brief, and it does not appear to affect the Examiner's conclusion of
obviousness.
5 Appellant's Brief does not provide any citation or otherwise explain how
these values were calculated. Furthermore Appellant's calculations do not
use the properties of the heat-resistant porous layer relied upon by the
Examiner in making the rejection. In particular, the Examiner found that
"the heat-resistant porous layer has a total thickness of 1-10 µm (paragraph
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Appeal2014-005503
Application 13/046,802
1.35-94.5 g/m2 , based on the thickness 5-100 µm and porosity 30-80% of
the PMIA porous layer[6J of Ohno's description." Appeal Br. 8. Based upon
Appellant's calculations, which are not in conflict with the Examiner's
reasoning, the claimed range (2-3 g/m2) is prima facie obvious. See Harris,
409 F.3d at 1341.
Appellant argues that the data submitted in the Nishikawa Declaration
establishes that the present invention provides unexpected results relative to
the prior art. See Appeal Br. 8-9 (citing Declaration of Satoshi Nishikawa,
3-5 (January 18, 2013)). The Examiner, however, found that the Nishikawa
Declaration did not establish the existence of unexpected results because
Sample A is described as providing the allegedly unexpected results even
though Sample A is outside the scope of Appellant's claims. Answer 6. We
agree with the Examiner and further note that Sample B is also described as
providing the allegedly unexpected results even though it, too, is outside the
scope of Appellant's claims.
Thus, we are not persuaded to reverse the rejection of claims 1-12 on
the basis of these arguments.
Second, with respect to claims 2 and 8-12, Appellant argues "Ohno
does not teach, suggest or otherwise render obvious the requirement that
[0024]). Additionally, OHNO discloses that the heat-resistant porous layer
has a porosity of 10-80% (paragraph [0016])." Final Act. 3. The Examiner,
however, does not point out this problem with Appellant's calculations.
6 Appellant does not point out that the porosity relied upon by the Examiner
is the porosity of a heat-resistant porous layer comprised of a mixture of
PMIA and inorganic whiskers. See Ohno ,-i 16. This is a different material
from that described in ,-i 24 of Ohno.
5
Appeal2014-005503
Application 13/046,802
when the shutdown characteristics are evaluated, the resistance is
1.0 x 104 ohm·cm2 or more at 150 to 190°C." Appeal Br. 9.
The Examiner found that the combination of Ohno and Takami
suggests a membrane that will have the claimed shutdown feature. Final
Act. 5. In particular, the Examiner points to iJ 178 of Ohno, which
"discloses that when the porous film was heated for 5 minutes at hundred
and 70° C, the porous became plugged resulting in a gas permeability of
substantially 0 (and therefore a very high resistivity)." Id.
Appellant argues that this finding is incorrect. In particular, Appellant
argues that the Yoshitomi Declaration demonstrates that the membrane
described in Ohno's Example 16 does not have the requisite resistance when
tested according to the procedures used in Appellant's Specification. See id.
at 9-10 (citing Declaration ofTakashi Yoshitomi 7-12 (dated October 5,
2011)).
The data presented in the Y oshitomi Declaration, however, is not
persuasive because Y oshitomi' s attempt to reproduce the membrane
described in Ohno' s Example 16 was unsuccessful. As noted in the
Declaration, Y oshitomi was unable to obtain the particular polyethylene
porous film used in Ohno and had to substitute in a polyethylene porous film
that Y oshitomi believes resembled the material used in Ohno' s example 16.
Yoshitomi Declaration 8. Furthermore, the Yoshitomi Declaration shows
that the attempted to reproduce the membrane described in Example 16 is
unsuccessful. Table 2 of the Declaration reports that the composite
membrane had a gas permeability of 240,000 sec/100 cc (about
5300 sec/100 cc·µm) and a porosity of 49.2%. In contrast, the Declaration
reports that the composite membrane described in Ohno's Example 16 had a
Gurley value of 333 sec/100 cc (about 6.7 sec/100 cc·µm) and a porosity of
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Appeal2014-005503
Application 13/046,802
60%. Id. Because the Y oshitomi Declaration only describes a single
attempt to reproduce Ohno's Example 16, we do not regard this Declaration
as demonstrating that Ohno's teachings are inaccurate or unreliable.
Because of the differences between Y oshitomi' s composite membrane
and the composite membrane described in Ohno' s Example 16, we are not
persuaded that the resistivity data presented in Figure 2 of the Declaration is
at all representative of the resistivity generated by the Example 16 composite
membrane. Thus, we are not persuaded to reverse the rejection of claims 2
and 8-12.
CONCLUSION
For the reasons set forth above, we affirm the Examiner's rejection of
claims 1-12 of the '802 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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