Ex Parte Yu et al

Patent Trials and Appeals Board

Mar 25, 2019

14559180 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/559,180
86765
LGCHEM
7590
FILING DATE FIRST NAMED INVENTOR
12/03/2014 Hyung-Kyun Yu
03/27/2019
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
600 South Avenue West
Westfield, NJ 07090
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.
LGCHEM 3.9-275 CON
DIV(E
4330
EXAMINER
ZHANG, HAIXIA
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYUNG-KYUN YU,
JONG-HUN KIM, and JANG-HYUK HONG
Appeal2018-004883
Application 14/559,180
Technology Center 1700
Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2018-004883
Application 14/559,180
The invention is directed to a method for manufacturing a separator
by coating a slurry comprising a water scavenger onto a porous substrate,
where the slurry components are mixed without being milled. App. Br. 2-3.
According to the Specification, the air permeability of the separator is
maintained when the slurry is mixed without milling because the water
scavenger is not subject to deformation. Spec. ,r 90. Claim 1 is illustrative
of the subject matter on appeal and is reproduced below:
1. A method for manufacturing a separator,
compnsmg
preparing first inorganic particles having an average
diameter of 1 to 10 µm and coated with a coupling agent on the
surface thereof, and second inorganic particles having an
average diameter of 50 to 500 nm and coated with a coupling
agent on the surf ace thereof;
mixing the first inorganic particles, the second inorganic
particles, a binder polymer, a water scavenger, and a solvent to
obtain a slurry having a uniform dispersion of the first and
second inorganic particles in the solvent without agglomeration
of the first and second inorganic particles, wherein the mixing
process is not a milling process; and
coating the slurry on at least one surface of a porous
substrate.
Appellants 1 (see generally App. Br.) request review of the following
rejections from the Examiner's Non-Final Action dated June 16, 2017:
I. Claims 1-3 and 5 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Umehara (US 2011/0212357 Al, published September 1,
2011), Katayama (US 2011/0003209 Al, published January 6, 2011), and
Brilmyer (US 2008/0113259 Al, published May 15, 2008).
1 LG CHEM, LTD. and TORAY INDUSTRIES, INC. are the
Applicants/Appellants. LG CHEM, LTD. and TORAY INDUSTRIES, INC.
are also identified as the real party in interest. App. Br. 2.
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Application 14/559,180
II. Claim 4 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Umehara, Katayama, Brilmyer, and Bak (US
2009/0246640 Al, published October 1, 2009).
Appellants present arguments for independent claim 1 and do not
present arguments for dependent claims 2, 3, and 5 (Rejection I), or for
separately rejected dependent claim 4 (Rejection II). See generally App. Br.
Accordingly, we select the independent claim 1 as representative of the
subject matter claimed and decide the appeal as to all grounds of rejection
based on the arguments Appellants make in support of patentability of claim
1.
OPINION
After review of Appellants' and the Examiner's respective positions,
we AFFIRM the Examiner's prior art rejections of claims 1-5 for the
reasons the Examiner presents. We add the following for emphasis.
We refer to the Examiner's Non-Final Action for a complete
statement of the rejection of claim 1. Non-Final Act. 2-8.
Appellants principally argue that the cited art on which the Examiner
relies (1) does not teach mixing of a water scavenger with other components,
(2) does not teach a mixing process that is not a milling process, and
(3) does not recognize the problem that the claimed invention solves. See
generally Appeal Br. We address each of Appellants arguments in tum.
(1) Water Scavenger
The Examiner finds that the combined teachings ofUmehara and
Katayama disclose a method of manufacturing a separator that differs from
the claimed invention in that the combined teachings do not teach the use of
a water scavenger as part of the components forming the slurry. Non-Final
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Application 14/559,180
Act. 2-7. The Examiner turns to Brilmyer as teaching the use of porosity
controlling particles, such as super absorbent polymers (SAP) (i.e., a water
scavenger),2 in a separator. Non-Final Act. 7; Brilmyer ,r 27. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to modify the combined teachings of Umehara and Katayama to incorporate
Brilmyer' s water scavenger as a slurry component because it would result in
an improved microporous separator for energy storage cells. Non-Final Act.
7; Brilmyer ,r 2.
Appellants argue that the combined teachings of the cited art do not
disclose mixing of the claimed slurry components, which includes a water
scavenger. App. Br. 6. Appellants argue that, instead, the combined
teachings disclose mixing the components without a water scavenger to
obtain a slurry because Umehara and Brilmyer are directed to different
polymeric materials. Id. According to Appellants, Umehara only discloses
the use of polyvinylidene fluoride (PVDF) as a binding agent in making the
inorganic oxide layer, which is not a polyolefin, while Brilmyer discloses
adding a porosity control agent (water scavenger) to polyolefins. Id. Thus,
Appellants contend that one skilled in the art would not have added
Brilmyer's water scavenger to Umehara's PVDF polymer in view of these
diverse teachings. Id.
Appellants' arguments do not persuade us of Examiner error for the
reasons the Examiner presents. Appellants acknowledge that Brilmyer
mixes the ingredients, including the water scavenger, as part of the process
of manufacturing the separator. Reply Br. 7. Although Appellants contend
2 Appellants do not dispute the Examiner's finding that Brilmyer's SAP is a
water scavenger. Non-Final Act. 7; see generally App. Br.
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Appeal2018-004883
Application 14/559,180
that Brilmyer's porosity control agents are limited to benefiting polyolefin
separators (App. Br. 6; Brilmyer ,r 20), we agree with the Examiner's
determination that Brilmyer's disclosure is not as limited as Appellants
argue. Ans. 13.
Brilmyer discloses that "[p ]articularly suitable materials for separators
... are polymeric materials such as polyolefins" (Brilmyer ,r 20). Thus,
polyolefins are a preferred material for Brilmyer' s separators. Brilmyer,
however, is not limited to its preferred embodiments. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered."
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794n.1 (CCPA 1982) (explainingthatapriorart
reference's disclosure is not limited to its examples). Instead, all of the
disclosures therein must be evaluated for what they would have fairly
suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961,
965 (CCPA 1966). Here, Appellants do not adequately explain why
Brilmyer' s preferred use of polyolefins limits its broader disclosure of
polymeric materials as suitable materials for separators. Appellants,
therefore, do not persuade us that one skilled in the art would have found
Brilmyer' s water scavenger unsuitable for use in Umehara' s process of
manufacturing a separator, particularly when Umehara recognizes that the
porosity of an inorganic layer in a separator can impact battery output
(Umehara ,r,r 7-8) and Brilmyer's water scavenger is a porosity-controlling
agent that expands or contracts in response to an electrolyte concentration
(Brilmyer ,r 27).
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Appeal2018-004883
Application 14/559,180
(2) Mixing process that is not a milling process
The Examiner finds that Katayama, directed to a method of
manufacturing a separator (Katayama ,r 1 ), discloses a mixing process for
mixing the components to form a slurry where the mixing process is not a
milling process (Non-Final Act. 7; Katayama ,r,r 130, 131 ).
Appellants do not dispute the Examiner's finding regarding
Katayama, but argue that there is no disclosure in Katayama that would lead
a skilled artisan to exclude a milling process for the purpose of lowering
hydrophobicity as the Examiner contends. Reply Br. 6. Further, Appellants
argue that Brilmyer uses a milling process after mixing a water scavenger
and other slurry components and, therefore, does not disclose a mixing
process that excludes milling. App. Br. 7; Reply Br. 6; Brilmyer ,r 34.
Thus, Appellants contend that one skilled in the art would not have used
Brilmyer' s water scavenger, which is used in a process of making a
separator involving mixing and milling processes, in a process of
manufacturing a separator that involves only mixing. App. Br. 7; Reply Br.
6-7 (both citing Brilmyer ,r 34).
Appellants' arguments do not persuade us that the Examiner erred.
Appellants' arguments attack the references individually and, thus, do not
address the rejection the Examiner presents. It is well-established that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413,425 (CCPA 1981) ("The test [for obviousness] is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.").
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Appeal2018-004883
Application 14/559,180
Appellants do not dispute that Katayama discloses it was known to
manufacture a separator by mixing slurry components using a mixing
process that is not a milling process. Reply Br. 6; Ans. 4; Katayama ,r,r 130,
131. Although Appellants argue that the use of a water scavenger in
Brilmyer is limited to mixing processes that are milling processes, we don't
agree with Appellants given that Umehara suggests using a porosity-
controlling agent and Brilmyer discloses such a porosity-controlling agent.
As previously noted, Umehara recognizes that the porosity of an inorganic
layer in a separator can impact battery output (Umehara ,r,r 7-8) and
Brilmyer' s water scavenger is a porosity-controlling agent that expands or
contracts in response to an electrolyte concentration (Brilmyer ,r 27).
Appellants fail to adequately explain why one skilled in the art would not
have found Brilmyer's water scavenger useful in a mixing process that is not
a milling process, such as the process Katayama discloses.
(3) Problem solved
Appellants argue that evidence in the Specification and the
Declaration under 37 C.F.R. § 1.132 by Hyung Kyun Yu3 demonstrate that
the claimed invention recognizes and solves the problem of reduced air
permeability in a separator due to deformation of the water scavenger when
a milling process is utilized to obtain the slurry. App. Br. 13-14; Reply Br.
2-5, 10-13 (both citing Spec. ,r 90).
We have considered Appellants' argument with respect to this issue
but find it unavailing for reasons the Examiner presents by. Ans. 29-30.
3 The Declaration was submitted April 26, 2016, and entered into the record
in the Non-Final Action dated June 16, 2017.
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Appeal2018-004883
Application 14/559,180
Appellants' evidence shows that a slurry comprising a water
scavenger undergoing a milling process has an inferior air permeability to a
slurry comprising a water scavenger that does not undergo a milling process.
App. Br. 13 (comparing Example 2, in which the separator is manufactured
from a slurry that is mixed without a milling process, with Comparative
Example 3, in which the separator is manufactured from a slurry that
undergoes milling).
We first note that the Specification does not expressly disclose that
the difference in air permeability is a problem. Spec. ,r 90. Although
Appellants attribute the alleged problem to the milling process, Appellants
do not adequately explain how this distinguishes the claimed invention from
the combined teachings ofUmehara and Katayama, which do not include a
milling process.
Appellants also allege that this evidence shows unexpected results in
providing improved air permeability for the separator. Reply Br. 10-13.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 5 31 F .2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
Appellants. Appellants may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997).
Further, a showing of unexpected results with factual evidentiary
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Appeal2018-004883
Application 14/559,180
support must be reasonably commensurate in scope with the claims. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
After weighing Appellants' evidence in support of patentability, we
determine that a preponderance of the evidence weighs in favor of
obviousness.
We first note that there is no recognition in the Specification that the
data shown in Table 1 describes anything unexpected with respect to the air
permeability of separators. Spec. ,r 90. Further, Appellants do not explain
adequately how the data in Table 1 distinguishes the claimed invention from
the closest prior art (Umehara).
In addition, Appellants' unexpected results argument is based on a
single inventive sample, Example 2. Spec. ,r 90; App. Br. 13. Appellants do
not explain sufficiently why this single inventive sample is representative of
the broad scope of slurry compositions/separators that the claimed process
encompasses, so as to provide an adequate basis to support a conclusion that
other embodiments falling within the claim will behave in the same manner.
Thus, on this record, Appellants do not show why the evidence shows
that air permeability of the compositions/separators that the claimed process
encompasses would have been unexpected by one of ordinary skill in the art,
or that the evidence is reasonably commensurate in scope with the claims.
Accordingly, we affirm the Examiner's prior art rejections of claims
1-5 under 35 U.S.C. § 103 (a) (Rejections I and II) for the reasons presented
by the Examiner and given above.
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Appeal2018-004883
Application 14/559,180
DECISION
The Examiner's prior art rejections of claims 1-5 under 35 U.S.C.
§ 103(a) are affirmed.
TIME PERIOD
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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