Ex Parte Ujiie et al

Patent Trials and Appeals Board

Jan 31, 2019

10399343 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/399,343 04/16/2003 Y asuharu Ujiie
26263 7590 02/01/2019
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
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.
1000074-000017 6979
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
02/01/2019 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 Y ASUHARU UJIIE and MASHIO SHIBUYA
Appeal2017-004073
Application 10/399,343
Technology Center 1700
Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
DEBORAH KATZ, Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004073
Application 10/399,343
Appellants 1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 1, 2, 4, 5, 14--17, 23-27, 29, 30, 33-38,
40, and 41. 2 (Appeal Brief filed July 25, 2016 ("App. Br.") 1.) We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Appellants' specification is directed to batteries. (See Specification
("Spec.") 1.) The currently claimed batteries include a separator comprising
a microporous film with multiple pores of a specified average size, average
pore diameter ratio, and porosity. Specifically, Appellants' claim 1, the only
independent claim on appeal, recites 3
A lithium ion secondary battery comprising:
a positive electrode and a negative electrode which face
each other;
a gel electrolyte comprising a non-aqueous solvent and a
lithium salt; and
a separator located between the positive electrode and the
negative electrode; wherein,
the separator comprises at least one microporous film
having multiple pores, said pores having (i) an average size of
0.15 µm or less, and (ii) an average pore ratio of a shortest
internal diameter to a longest internal diameter not less than O. 7
nor more than 1.0, and
1 Appellants report that the real party in interest is Sony Corporation. (App.
Br. 1.)
2 Claims 3, 6-13, 18-22, and 39 were cancelled and claims 28, 31, and 32
were withdrawn. (See App. Br. 1.)
3 Appellants recite claim 1 in the appendix to their Appeal Brief as including
the limitation "the microporous film having [sic: has] a porosity of 30% to
50%, both inclusive." (App. Br. 7, Claims App'x.) Because an amendment
changing "having" to "has" was not entered by the Examiner, we do not
review the claims with this change. We note that this change in claim
language has no effect on the issues of this appeal.
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Application 10/399,343
the microporous film having a porosity of 30% to 50%,
both inclusive.
(Response to January 12, 2016 Final Office Action, filed April 26, 2016.)
The Examiner rejected claims 1, 2, 4, 5, 14--17, 23-27, 29, 30, 33-38,
40, and 41 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
Inoue4 and Doi5. (See App. Br. 6.) Appellants do not argue for the separate
patentability of any of these claims. We focus on claim 1 in our review. See
37 C.F.R. § 4I.37(c)(l)(iv).
Findings of Fact
1. Inoue teaches a non-aqueous secondary battery including,
positive and negative electrodes, an electrolyte that is a non-aqueous
(organic) solvent with lithium salt, and a porous separator. (See Inoue
abstract, 12: 12-35 and Figure 1; see Ans. 2.)
2. Inoue teaches that the separator is microporous, with a porosity
of 35-80%. (See Inoue 11 :24--26; see Ans. 2.)
3. Inoue teaches that the separator has pores sized from 0.05 to 30
µm. (See Inoue 11:17-19.)
4. Inoue teaches that the pores of the separator are normally
circular or elliptical. (See Inoue 11: 17-18; see Ans. 2.)
5. The ratio of the shortest internal diameter to the longest internal
diameter of a circular pore would be 1.0. (See Ans. 2-3.)
4 Inoue et al., US 6,090,506, issued July 18, 2000.
5 Doi et al., US 4,190,707, issued February 26, 1980.
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Application 10/399,343
6. Inoue does not explicitly teach the average pore size or the
average ratio of shortest internal diameter to the longest internal diameter of
the porous polyolefin separator. (See Ans. 3.)
7. Doi teaches a battery separator that can be disposed between a
positive and a negative electrode. (See Doi abstract and 1 :30-35; see Ans.
3.)
8. Doi teaches that the separator is porous and consists
substantially of polyolefin. (See Doi abstract and 1 :4---6.)
9. Doi teaches that the separator has an average porosity of 50-
80%, an average pore diameter of 0.05---0.5 µ, and an average ratio of the
larger dimension to the smaller dimension of the pore opening of more than
2. (See Doi abstract; 11:18-22.)
10. Doi provides Example 1, wherein the average pore diameter is
0.12 µ. (See Doi 13:62---67.)
11. Example 1 of Doi also provides that the pores have an average
ratio of the longitudinal or larger dimension to the lateral or small dimension
of the pores of 1.1, which has an inverse ( the ratio of the shorter dimension
to the larger dimension) of0.9. (See Doi 13:62---67; see Ans. 4.)
12. Doi teaches an "alkaline battery separator," but explains that it
can also be used in other types of batteries employing organic solvent as the
electrolytic liquid. (See Doi 1: 14--25; see Ans. 4.)
13. Doi teaches that its separator has excellent mechanical strength
and is flexible. (See Doi abstract; see Ans. 4.)
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Application 10/399,343
Analysis
The Examiner determines it would have been obvious for one of
ordinary skill in the art to make Inoue' s battery with a separator having the
characteristics of the separator taught in Doi, because the separators of Inuoe
and Doi are both microporous polyolefin separators. (Ans. 4.) The
Examiner finds that a separator with the characteristics taught in Inuoe have
"predetermined mechanical strength" (Inuoe 11 :7-9) and that Doi teaches its
separator has excellent mechanical strength and flexibility (see Doi abstract).
(See Ans. 4.)
Appellants argue that Inoue fails to teach a separator with the claimed
average pore diameter and the claimed average pore ratio. (See Ans. 4;
Reply Br. 4--5.) Because the Examiner relies on Doi for these claim
elements, we are not persuaded by Appellants' argument. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Whether or not
Doi recognizes the importance of such characteristics, one of ordinary skill
in the art would have understood that separators can have these
characteristics. (See Reply Br. 5.)
Appellants argue that one of ordinary skill in the art would not have
been motivated to alter the battery of Inoue by using the separator of Doi to
arrive at the claimed invention, because Doi teaches a separator with a
porosity of 50 to 80%, which Appellants assert is outside the porosity of the
separator recited in claim 1. (See App. Br. 1; Reply Br. 5.) The separator
recited in claim 1 has "a porosity of 30% to 50%, both inclusive." (See App.
Br. 7, Claims App'x.) We are not persuaded by Appellants' argument
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because the range of porosity taught in Doi includes 50%, which is
encompassed by the claimed range. (See Doi 11: 18.) Despite Appellants'
argument, overlap of the claimed range only at its end points can render the
claimed range obvious. See In re Malagari, 499 F.2d 1297, 1303 (CCPA
197 4) (holding that a claim is obvious were the claimed range of carbon in
the steel used as a starting material touches that in the typical preferred range
of the reference).
Appellants also argue that the because the separator of Doi is very
different from that taught in Inoue, there would not have been motivation to
modify the battery of Inoue with it. (See App. Br. 5.) Specifically,
Appellants argue that Doi is directed to alkaline batteries, not lithium ion
batteries as claimed. (See id.) According to Appellants, one of ordinary
skill in the art would not have looked to separators used in alkaline batteries
for use in lithium ion batteries because they have different chemistries and
different types of reactions. (See id.)
We are not persuaded by this argument because Doi teaches that the
disclosed separator can be used with batteries other than alkaline batteries.
(See Doi 1:14--25; Ans. 4.) Furthermore, batteries that use organic solvents
as the electrolytic liquid are expressly included in the types of batteries that
can employ the separator of Doi. (See id.) Appellants' claimed battery
recites a "gel electrolyte comprising a non-aqueous solvent." Therefore, we
are not persuaded that Doi teaches separators for use in as narrow a group of
batteries as Appellants argue.
Appellants argue further that the very low level of electrical resistance
taught in the Doi is the opposite of what one of ordinary skill in the art
would use for a lithium ion battery as claimed. (See App. Br. 5.) According
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Application 10/399,343
to Appellants, the goal for lithium-ion batteries is to reduce the possibility of
short circuits and reducing resistivity to the low levels espoused by Doi is
not favorable. (See App. Br. 5.) This argument is not persuasive because
Appellants do not cite evidence to support it. Appellants do not provide a
specific citation for their assertion that Inoue requires a certain level of
porosity or increased electrical resistance. (See Reply Br. 6-7.) "Argument
of counsel cannot take the place of evidence lacking in the record." Meitzner
v. Mindick, 549 F.2d 775, 782 (CCPA 1977). We note, further, that
Appellants do not recite a specific level of electrical resistance in their
claims.
Appellants argue further that the separator of Doi differs from the
separator recited in Appellants' claims because Doi teaches that the pores
create a complex network that inhibits transmission of the active materials of
the battery. (See App. Br. 5; see Doi 11 :29--35.) According to Appellants,
the separators for the claimed lithium-ion battery are designed to allow
lithium ion to pass through the separator and between the positive and
negative electrodes. Appellants assert that the passage of material is
preferred in the claimed separator, not inhibited. (See App. Br. 5.)
Appellants' argument is not persuasive because claim 1, as drafted, does not
require an arrangement of pores that allows lithium to pass through the
separator. Moreover, Appellants fail to cite support for their assertions. In
other words, Appellants have not shown that Inoue, as modified by Doi,
would not have resulted in a battery as claimed.
We are not persuaded that one of ordinary skill in the art would not
have looked to the combined teachings of Inoue and Doi and considered the
claimed battery to have been obvious.
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Conclusion
Upon consideration of the record and for the reasons given, the
rejection of claims 1, 2, 4, 5, 14--17, 23-27, 29, 30, 33-38, 40, and 41 under
35 U.S.C. § 103(a) over Inoue and Doi is sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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