Ex Parte Tsutsumi et al

Patent Trial and Appeal Board

Mar 22, 2018

13816698 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/816,698 02/12/2013 Masakazu Tsutsumi
21254 7590 03/23/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
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.
Gl 10043USOO 7255
EXAMINER
MOSS, JENNIFER A
ART UNIT PAPER NUMBER
1723
MAILDATE DELIVERY MODE
03/23/2018 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 MASAKAZU TSUTSUMI, 1
Motoki Hoshino, Jun Nakamura, Shinsuke Yoshitake, and
Takeshi Sasaki
Appeal2017-003915
Application 13/816, 698
Technology Center 1700
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and
MONTE T. SQUIRE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Masakazu Tsutsumi, Motoki Hoshino, Jun Nakamura, Shinsuke
Y oshitake, and Takeshi Sasaki ("Tsutsumi") timely appeal
1 The real party in interest is identified as GS Yuasa International, Ltd.
(Appeal Brief, filed 7 September 2016 ("Br."), 1.)
Appeal2017-003915
Application 13/816,698
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 3-8 and 10-
20.3 We have jurisdiction. 35 U.S.C. § 6. We reverse.
OPINION
A. Introduction4
The subject matter on appeal relates to an electrical storage device
such as a battery. As illustrated in Figure 2, below, the storage device,
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{Figure 2 shows a battery RB with external case 1 removed}
2 Office Action mailed 4 May 2016 ("Final Rejection"; cited as "FR");
maintained in response to a Request for Reconsideration filed 30 June 2016
("Request") (Advisory Action mailed 18 July 2016, "Adv.").
3 Remaining copending claims 1, 2, and 9 have been withdrawn from
consideration (FR 1 § 5a) by the Examiner, and are not before us.
4 Application 13/816,698, Manufacturing method of electric storage device
and electric storage device, filed 12 February 2013, as the national stage
under 35 U.S.C. § 371 of PCT/JP2011/067767, which was filed 3 August
2011, claiming the benefit of an application filed 17 August 2010, in Japan.
We refer to the "'698 Specification," which we cite as "Spec."
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Application 13/816,698
lithium-ion battery RB 5, comprises a case 1 (made invisible in Figure 2)
containing an energy storage element 3---here, a flattened, wound pair of
electrode sheets sandwiching a separating layer. (Spec. 8 [0023],
10 [0027].) As shown in the figure, the ends of the sheets 3a and 3b are
connected to corresponding edges 4a and 6a of current collectors 4 and 6.
Current collectors 4 and 6 are conductive strips of metal that connect to
positive and negative terminals 5 and 7, respectively, on lid 2 that closes the
top of case 1. A liquid electrolyte is poured into case 1 through an
electrolyte solution opening 14 (not shown in Figure 2). Opening 14 is then
welded shut with plug 16.
According to the Specification, splatters may drop from the welding
onto energy storage element 3, or the laser beam for the welding may
damage, e.g., a separating layer on the outermost side of the energy storage
element. (Spec. 2-3 [0006].) Tsutsumi seeks patent protection for an
energy storage device that avoids this problem by providing an L-shaped
current collector 4 in which the arm that runs from the edge of the battery
parallel to lid 2 to terminal 5 is wider than the diameter of electrolyte
solution opening 14, thereby shielding energy storage element 3 from the
splatter or the welding laser beam. (Id. at 22 [0060]-23 [0062].) In some
embodiments, the arm of current collector 4 that runs down the side of
case 1 may be perforated with holes 15 to speed the delivery of electrolyte to
energy storage element 3 when the electrolyte is poured into the case.
(Id. at 20 [0057].)
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
3
Appeal2017-003915
Application 13/816,698
Claim 3 is representative and reads:
An electric storage device [RB], comprising:
a case [1] including an electrolyte solution pouring
opening [14] through which an electrolyte solution is to
be poured into the case;
an electric storage element [3] housed in the case;
an electrode terminal [5] disposed on an outer side [2] of
the case; and
a current collector [ 4] including
at least a first attitude portion [FP] disposed in an
attitude along a face [2] in which the electrolyte
solution pouring opening is formed,
to block a view of the electric storage element [3]
from the electrolyte solution pouring opening [14],
the current collector [ 4] electrically connecting the electric
storage element [3] and the electrode terminal [5],
wherein the current collector [ 4] includes
a through hole [15], in a cross sectional view of the
electric storage device, the through hole [15]
longitudinally extending in a direction orthogonal to
the face [2] in which the electrolyte solution pouring
opening [14] is formed,
for flowing the electrolyte solution to the electric
storage element [3] in a direction parallel to the
face [2] in which the electrolyte solution pouring
opening [14] is formed.
(Claims App., Br. 10-11; some indentation, paragraphing, emphasis, and
bracketed labels to elements shown in Figures 1--4 added.)
Remaining independent claim 20 is similar, but does not recite the
presence of through-hole 15. (Id. at 14--15.)
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Appeal2017-003915
Application 13/816,698
The Examiner maintains the following grounds of rejection: 6' 7
A. Claims 3-5, 7, 10, 11, and 14--20 stand rejected under
35 U.S.C. § 103(a) in view of Sato. 8
Al. Claims 6, 8, 12, and 13 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Sato
and Byun. 9
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Initially, we find that Tsutsumi, in the principal Brief on Appeal,
raises arguments for patentability based solely on limitations recited in
claim 3. All claims therefore stand or fall with claim 3.
37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Sato describes a battery, illustrated in an
exploded view in Figure 3, reproduced on the following page, that meets all
the limitations recited in claim 3, but for the placement of the electrolyte
solution opening 14. (FR 3--4.) In the embodiments taught by Sato, the
electrolyte solution opening 14 is in the middle of lid 12, between
6 Examiner's Answer mailed 28 December 2016 ("Ans.").
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 Koichi Sato et al., Square battery, JP 2005-267945 (2005).
9 Sang-Won Byun et al., Rechargeable battery, U.S. Patent Application
Publication 2011/0052949 Al (2011)
5
Appeal2017-003915
Application 13/816,698
terminals 4 and 40, rather than between one of the terminals and the edge of
case 11.
{Sato Figure 3 is shown below}
--::o
(~:~~~~:,_,~~'0-'"
{Sato Figure 3 shows an exploded view of a battery}
However, the Examiner finds that a similarly sized opening, gas exhaust
valve 13, is positioned above lead member 5 of current collector 3. The
Examiner reasons that "[i]t would have been an obvious modification to
switch the positioning of the electrolyte solution pouring opening and the
gas exhaust valve on the top plate so that the first attitude portion blocks a
view of the electric storage element from the electrolyte solution pouring
opening." (FR 4, 11. 1--4.) The Examiner explains that "[s]uch a
modification would not alter the operation of the battery and it is a well-
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Appeal2017-003915
Application 13/816,698
known configuration in the art to have the gas exhaust valve in the center of
the battery top plate rather than to one side." (Id. at 11. 4---6.)
In response to Tsutsumi' s argument (Request 7) that Sato positions
the electrolyte pouring opening in the middle of the cell to promote even
distribution of the electrolyte, the Examiner responds that Tsutsumi' s
arguments are merely speculative (Adv. 2). Furthermore, the Examiner
finds that Sato discloses in paragraph [0029] that "the through holes [34] in
the current collector plate facilitate the impregnation of the electrolyte by the
electrode assembly." (Adv. 2.) The Examiner reasons further that the fluid
electrolyte will "flow throughout the container wherever it is unimpeded by
the presence of another mass." (Id.) Accordingly, the Examiner discounts
Tsutsumi's arguments (Request 7-8) that the proposed modifications would
change the principle of operation of Sato, and require an undue "extra effort
to design and guide the electrolyte solution uniformly and evenly into both
sides of the electric storage element 2." (Request, sentence bridging 7-8.)
Tsutsumi urges in the Brief that elimination of the original symmetrical
distribution of the electrolyte solution "might" result in maldistribution of
the fluid, as a "result of generating bubbles, channeling, delay in uniform
distribution." (Br. 6, citing, apparently for the first time, a portion of a book
on fluid mechanics that is not made of record.)
We do not find the Examiner's findings in this regard well supported.
For one thing, there is no translation of Sato of record, beyond the English
language Abstract by Patent Abstracts of Japan, provided with the original
Information Disclosure Statement (filed 12 February 2013, upon entry to the
national stage). Accordingly, the Examiner's findings are supported, at best,
by the English language Abstract and by the Figures in Sato. In particular,
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Appeal2017-003915
Application 13/816,698
there is no confirmation that element 14 is an electrolyte solution pouring
opening, and the citation to paragraph [0029] in the Advisory Action cannot
be verified or evaluated. Thus, we find little in the record supporting the
Examiner's findings.
Similarly, we find little in the record to support Tsutsumi's arguments.
The textbook cited by Tsutsumi for the first time in the Brief (Br. 6) does not
appear to have been made of record during examination, and reliance on
evidence not of record is permitted only in response to a new ground of
rejection. 37 C.F.R. § 41.37(c)(l)(iv) (third sentence). We therefore do not
credit Tsutsumi's unsupported arguments regarding the possible unfavorable
effects of placing the electrolyte solution opening in a nonsymmetrical
position.
Nonetheless, the relevant reliable evidence of record provided by the
Sato Abstract and to a limited extent, the figures in Sato, indicates that there
is no substantial evidence supporting the Examiner's findings of fact. The
Sato Abstract reports that the problem to be solved is "[t]o provide a square
battery generating no hindrance in a gas exhausting function of a gas
exhausting valve without changing constitution installing the gas exhausting
valve in a sealing plate of a battery can." (Sato, Abstract, first sentence.) In
Sato's words, a solution is provided by fixing gas exhausting valve 13 "to a
position facing the surface of the lead member 5 extending to a
corresponding electrode terminal mechanism 4 from one current collector 3
in the sealing plate 12 of the battery can." (Id. at last sentence.) Thus, it
appears that the conductive strip 5, which runs parallel with lid 12 between
gas exhausting valve 13 and wound electrode body 2 protects gas exhausting
8
Appeal2017-003915
Application 13/816,698
valve 13 from being blocked by swelling of wound electrode body 2, as
illustrated in Sato Figure 2, reproduced below.
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{Sato Figure 2 shows a battery in cross section}
As is apparently indicated in Figure 2, swelling of wound electrode
body 2 blocks feature 14, which the Examiner finds is the electrolyte
solution opening. But, due to the intervention of current collector section 5,
that swelling does not block gas exhaust valve 13. Thus, the preponderance
of the evidence of record indicates that interchanging gas exhaust valve 13
and putative electrolyte solution opening 14 would defeat the purpose of
Sato' s invention because if gas exhaust valve 13 were placed where
feature 14 is placed, it would become blocked by swollen wound electrolyte
body 2.
We stress that our analysis is of the prior art evidence of record as it
stands, and would be subject to correction if a full translation of Sato, made
of record, indicates our analysis is based on incorrect assumptions.
However, the problem posed and solved, as indicated by the English
language Abstract of Sato, is not consistent with the Examiner's speculations
9
Appeal2017-003915
Application 13/816,698
regarding the implications of the teachings of Sato. We therefore conclude
that the preponderance of the evidence of record does not support a prima
facie case of obviousness.
The Examiner makes no findings regarding the further limitations of
the dependent claims or regarding the teachings of secondary reference
Byun that cure the defects of Sato.
We therefore reverse the appealed rejections.
C. Order
It is ORDERED that the rejection of claims 3-8 and 10-20 is
reversed.
REVERSED
10