Ex Parte Skinlo

Patent Trial and Appeal Board

Apr 22, 2013

10665687 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/665,687 09/17/2003 David M. Skinlo Q137-US6 6258
31815 7590 04/23/2013
MARY ELIZABETH BUSH
QUALLION LLC
P.O. BOX 923127
SYLMAR, CA 91392-3127
EXAMINER
RUDDOCK, ULA CORINNA
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
04/23/2013 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 PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte DAVID M SKINLO
____________

Appeal 2011-013689
Application 10/665,687
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013689
Application 10/665,687

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
decision rejecting claim 43. Appellant has withdrawn the appeal with
respect to claims 44, 45, 67-71, 73-75, and 77-90 (see Partial Withdrawal of
Appeal Under MPEP §1215.031 filed Sept. 12, 2011). Claims 72 and 76
were objected to as being dependent on a rejected base claim, but indicated
allowable by the Examiner (Final 12). We have jurisdiction over the appeal
of the sole remaining claim 43 pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Claim 43 is illustrative of the claimed subject matter:
43. An electric storage battery, comprising:
a case sealed by a first end cap and a second end cap;
an electrically conductive terminal pin extending through
the first end cap and electrically insulated from the case;
an electrode assembly disposed within the case, the
electrode assembly includes an electrode in electrical
communication with the pin and an electrode electrically
insulated from the pin;
a flexible conductive tab electrically coupled to the
electrode that is electrically insulated from the pin,
the tab extending from a first location adjacent to
the case to a second location,
the second location being further from the first
location than a centerpoint of the second end cap is from the
first location,

1 MPEP §1215.03 states “A withdrawal of the appeal as to some of the
claims on appeal operates as an authorization to cancel those claims from the
application . . . and the appeal continues as to the remaining claims.”
Appeal 2011-013689
Application 10/665,687

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the tab being immobilized relative to the second
end cap at the second location but not being immobilized
relative to the second end cap over the entire distance from the
first location to the second location.
The only rejections on appeal are:
1) claim 43 as unpatentable under 35 U.S.C. § 103(a) over
Kitoh (US 6,399,242 B2, issued June 4, 2002) in view of
Kitano (US 5,912,089, issued June 15, 1999); and
2) Claim 43 as unpatentable under 35 U.S.C. § 103(a) over
Kitoh in view of Chreitzberg (US 3,159,508, issued Dec. 1.
1964).

ANALYSIS
We find that the preponderance of evidence supports the Examiner’s
conclusion that the subject matter of Appellant’s claim 43 is unpatentable
over the applied prior art of Kitoh and Kitano. The alternative § 103
rejection based on Kitoh and Chreitzberg presents similar issues and is
cumulative to this rejection (Ans., App. Br. generally). Accordingly, we
sustain each of the Examiner’s § 103 rejections of the claim on appeal for
substantially the reasons set forth in the Answer. We provide the following
for emphasis.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991). It is well established that a
reference may be relied upon for all that it would have reasonably suggested
to one having ordinary skill in the art, including non-preferred embodiments.
Appeal 2011-013689
Application 10/665,687

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Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“all disclosures of the prior art, including unpreferred embodiments, must
be considered.”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))2.
Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or non-preferred embodiments. In re Susi,
440 F.2d 442, 446 n.3 (CCPA 1971).
Appellant’s main argument with respect to the rejection based on
Kitoh and Kitano is that Kitano teaches away from the use of only one
immobilization weld A on the tab/current collecting plate 6 because Fig. 4 of
Kitano depicts a second weld B in addition to the first weld A (App. Br. 17;
Reply Br. 6-9). Notably, however, as admitted by Appellant, Kitano does
teach a prior art comparative embodiment of a battery wherein there is only
one weld (Reply Br. 8; see, e.g., Kitano, Figs. 2, 3 as relied upon by the
Examiner (Ans. 14, 153)). The improvement of Kitano is providing a second
weld after closing the cap to provide for “enhance[d] mechanical strength
and . . . vibration resistance” (Kitano, see, e.g., Abstract; also, e.g., col. 1, ll.
40-43, “In the conventional alkaline storage battery, however, the current

2 See also In re Boe, 355 F.2d 961, 965 (CCPA 1966) (“All of the
disclosures in a reference must be evaluated for what they fairly teach one of
ordinary skill in the art. Thus, . . . this court affirmed rejections based on art
which we concluded rendered the claimed invention obvious to those of
ordinary skill in the art despite the fact that the art teachings relied upon in
all three cases were phrased in terms of a non-preferred embodiment or as
being unsatisfactory for the intended purpose.”)
3 The Examiner’s Answer pagination is incorrect, as the Response to
Argument section starts correctly on page 13 which is then followed by an
unnumbered page, followed by two pages labeled 3, then pages labeled 4-9.
These pages are referred to as pages 14-22 herein.
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Application 10/665,687

5
collecting plate [the tab] is welded only at one portion to the bottom surface
of the closure cap assembly.”)
Thus, the Examiner’s finding that Kitano exemplifies that it was
known to provide a tab that is welded/immobilized at “the second location
but not being immobilized relative to the second end cap over the entire
distance from the first location to the second location” as recited in claim 43
is reasonable, even though Kitano’s preference was to use a second weld B
in addition to the first weld A.
Appellant has provided no evidence, or any persuasive line of
technical reasoning, explaining why the Examiner’s determination that it
would have been obvious to use a known prior art welding/immobilization
configuration for a current collecting tab as exemplified in Kitano (or
Chreitzberg) for the conductive tab(s) 5 of Kitoh is in error (Ans. 13-17; see
generally App. Br.; Reply Br.).
Accordingly, we sustain both of the § 103 rejections on appeal.

ORDER
The rejections of claim 43 under 35 U.S.C. § 103(a) based on Kitoh in
view of Kitano, and based on Kitoh in view of Chreitzberg, are affirmed.

TIME PERIOD FOR RESPONSE
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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