Ex Parte Goto et al

Board of Patent Appeals and Interferences

May 24, 2007

10188519 (B.P.A.I. May. 24, 2007)

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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHUSAKU GOTO, KAORU INOUE, YUI NIWA,
and TOYOJI SUGIMOTO
____________________

Appeal 2007-0693
Application 10/188,519
Technology Center 1700
____________________

Decided: May 24, 2007
____________________

Before: TEDDY S. GRON, ROMULO H. DELMENDO, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2006) from a final rejection
of claims 1-20. (Final Office action entered June 9, 2005.) We have
jurisdiction under 35 U.S.C. § 6(b) (2006).
Applicants state that they invented “a non-aqueous electrolyte
secondary battery, a negative electrode therefor, and [a] method of
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manufacturing the negative electrode.” (Specification 1:12-13.) According
to Applicants, the invention “provides batteries having a superior high-rate
discharge characteristic, especially the discharge characteristic at low
temperatures, and a superior charge-discharge cycle characteristic in a large
quantity and with stability.” (Specification 3:4-7.)
Representative claims 1, 5, and 16 read as follows:
1. A non-aqueous electrolyte secondary battery
comprising a rechargeable positive electrode, a non-aqueous
liquid electrolyte, and a negative electrode comprising a
negative electrode on a current collector;
in which:
the negative electrode material comprises: a mixture of
(1) a carbon material that is capable of absorbing and desorbing
lithium, and (2) a binder;
the carbon material is a graphite material;
the binder consists essentially of at least one material
selected from the group consisting of ethylene-propylene-
acrylic acid copolymers, ethylene-propylene-acrylate
copolymers, ethylene-propylene-methyl acrylic acid
copolymers, ethylene-propylene-methacrylic acid copolymers,
ethylene-propylene-methacrylate copolymers, and ethylene-
propylene-methyl methacrylic acid copolymers; and
the binder has an ethylene-propylene weight content in
the range of 70-95%.

5. The non-aqueous electrolyte secondary battery of
claim 1 wherein the binder comprises –COO- Na+ or –COO- K+
groups.

16. The non-aqueous electrolyte secondary battery of
claim 1 wherein the binder is an ethylene-propylene-methyl
acrylic acid copolymer and the binder has an ethylene to
propylene weight % between 80:20 and 20:80.

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The Examiner rejected claims 1-20 as follows: (1) claims 5, 10, 15,
and 20 under 35 U.S.C. § 112, ¶1 (written description requirement); (2)
claims 5, 10, 15, and 20 under 35 U.S.C. § 112, ¶2; (3) claims 1-4 and 11
under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a);
and (4) claims 5-10 and 12-20 under 35 U.S.C. § 103(a). (Examiner’s
Answer, entered September 1, 2006, at 2-5.)
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boer et al. (Boer) US 5,656,393 Aug. 12, 1997
The Examiner contends that:
(1) claims 5, 10, 15, and 20 violate the written description
requirement of 35 U.S.C. § 112, ¶1, because “[t]he
claims recite the binder comprises –COO- Na+ or –COO-
K+, groups which is not enabled by the specification,”
and “these groups are part of an intermediate product to
obtain the binder” rather than the binder itself
(Examiner’s Answer 2-3);
(2) claims 5, 10, 15, and 20 are indefinite because these
claims improperly broaden the claims from which they
depend (id. at 3);
(3) claims 1-4 and 11 are anticipated by or, alternatively,
would have been obvious in view of Boer because the
reference teaches the claimed invention with sufficient
specificity (id. at 3-4); and
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(4) claims 5-10 and 12-20 would have been obvious in view
of Boer because, although “Boer does not explicitly state
the binder (polymer) has an ethylene to propylene weight
percent of greater than 20:80,” “it is not inventive to
discover the optimum or workable ranges by routine
experimentation” and the limitations of “claims 5, 10, 15
and 20 are not given patentable weight because they
recite an intermediate product” (id. at 4-05).
Appellants, on the other hand, contend that:
(1) the disclosure, as originally filed, includes a written
description of the subject matter of claims 5, 10, 15, and
20 (Appeal Brief filed June 26, 2006 “Br.” at 4-5);1
(2) claims 5, 10, 15, and 20 do not improperly broaden the
claims from which they depend because the term
“acrylate” used to define one of the comonomers of the
copolymers in the base claim (i.e., claim 1) encompasses
the acid salts recited in the rejected claims (Br. 5-6);
(3) claims 1-4 and 11 are not anticipated by Boer because the
reference does not describe the subject matter with
sufficient specificity and, in particular, does not disclose
the recited ethylene-propylene weight content (i.e., the

1 This is to be distinguished from Appellants’ Appeal Brief filed on
December 20, 2005, The December 20, 2005 Appeal Brief addressed
different rejections than those before us and resulted in the Examiner
reopening prosecution.
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combined weight of ethylene and propylene) of 70-95%
for the copolymers (Br. 9-11); and
(4) claims 1-20 would not have been obvious in view of
Boer because the reference disclosure “would dissuade
the person of ordinary skill in the art from investigating a
copolymer (i.e. a terpolymer) in which ethylene,
propylene, and a third monomer, such as acrylic acid,
alkacrylic acid, or an ester thereof, were all present” (Br.
12), the reference does not disclose or suggest the lower
limit of 70% by weight for the amount of ethylene and
propylene in the copolymers (Br. 13), and Tables 17 and
18 of the specification establish the criticality of the
claimed weight range.
We reverse the rejections under 35 U.S.C. § 112. We affirm,
however, the rejection under 35 U.S.C. § 103(a) of all claims. Because our
affirmance of the 35 U.S.C. § 103(a) rejection addresses the patentability of
all claims, we do not reach the 35 U.S.C. § 102(b) issue.

ISSUES
Has the Examiner established that the disclosure, as originally filed,
fails to reasonably convey to one skilled in the relevant art that the inventors,
at the time the application was filed, did not have possession of a battery
including a binder copolymer with a –COO- Na+ or –COO- K+ group as
recited in claims 5, 10, 15, and 20?
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Has the Examiner established that claims 5, 10, 15, and 20 are
indefinite?
Has the Examiner established the unpatentability of claims 1-20 over
the applied prior art?

FINDINGS OF FACT
1. The subject matter of claims 5, 10, 15, and 20 is expressly
described in the Specification, as originally filed.
(Specification 5:22-31.)
2. Claim 5, as originally filed, recites: “The non-aqueous
electrolyte secondary battery of claim 1 wherein the binder
comprises –COO- Na+ or –COO- K+.”
3. The Specification indicates to one skilled in the relevant art
that the term “acrylate” or “methacrylate,” which is a
comonomer in the binder copolymer, is inclusive of sodium
or potassium salts of (meth)acrylic acid, such as potassium
(meth)acrylate. (Specification 5:22-31.)
4. Webster’s New World Dictionary 13, 853 (3rd ed., 1991)
defines “acrylate” as “a salt of acrylic acid containing the
radical C3H3O2 and used as a monomer to form various
acrylic polymers.” (Br., Evidence Appendix #1.)
5. Further, Webster’s defines “methacrylate” as “a salt or ester
of methacrylic acid.” (Br., Evidence Appendix #1.)
6. Appealed claims 5, 10, 15, and 20 specify particular salt
forms of the interpolymers recited in base claims 1 and 11.
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7. Boer describes (in a working example) a battery cell, which
is cycled 3 and 25 times (i.e., rechargeable), comprising an
electrode A or B used to form lithium/LiCoO2 cells and an
electrolyte composed of 80% methyl formate (52 ppm
water), 20% dimethyl carbonate (697 ppm water), 2.0M
LiAsF6, and 0.4M LiBF4. (Col. 10:25 to col. 11:40.)
8. The electrode is said to be a composite electrode of
aluminum screen encapsulated in a matrix composition
formed of a mixture of high density, ultra-high weight
average molecular weight (5,000,000) polyethylene, high
density polyethylene having a weight average molecular
weight of 250,000, graphite, carbon black, and lithiated
cobalt oxide. (Col. 10:27 to col. 11:8.)
9. Boer teaches alternative polymers for the matrix
composition as follows (col. 5:6-18):
The polymer component of the sheet matrix
may be a polyolefin having a weight average
molecular weight of at least 75,000 and can be
selected from polyolefins having a weight average
molecular weight of from 75,000 to about
5,000,000. The polyolefin can be selected from
homopolymers, such as polyethylene or
polypropylene or from copolymers formed from a
mixture of hydrocarbon olefin group (-HC=CH-)
containing monomers, such as ethylene, propylene,
butene and the like, or from a mixture of at least
80 percent, preferably at least 90 percent by
weight of such hydrocarbon olefinic monomer
with other olefinic group containing monomer,
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such as acrylic and alkacrylic acids or their esters.
[Emphases added.]

10. That Boer describes a non-aqueous electrolyte battery
comprising a rechargeable positive electrode, a non-aqueous
liquid electrolyte, and a negative electrode comprising a
negative electrode on a current collector is not contested.
(Br. 11-15.)
11. Appellants do not dispute the examiner’s factual finding that
Boer teaches a negative electrode material comprising a
mixture of (1) a graphite capable of absorbing and desorbing
lithium and (2) a ethylene-propylene interpolymer binder.
(Examiner’s Answer at 3-5; Br. 11-15.)
12. Table 17 of the present Specification provides data for four
classes of batteries (D1-D4) in which the ethylene-propylene
content of the binder polymer is varied (60%, 70%, 80%,
95%, and 98%).
13. Table 17 reports the corresponding discharge capacities and
electrode strengths for batteries D1-D4.
14. According to the present specification, “low-temperature
discharge characteristic was assessed by discharging at a
constant discharge current of 900 mA until a discharge
termination voltage of 3.0 V is reached after a constant-
current constant-voltage charging at a charging current of
630 mA at a charging voltage of 4.2 V for a charging time of
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2 hours in a -20 degrees C environment.” (Specification
13:5-9.)
15. According to the present specification, “[s]trength of the
negative electrode was tested by applying 1.5 cm-square
cellophane adhesive tape on the surface of the negative
electrode and measuring the force required to peel off the
negative electrode mix...” (Specification 13: 9-11.)
16. The Specification does not explain how the force required to
peel off the negative electrode mix is determined.
17. The D1 binder is said to be an ethylene-propylene-acrylic
acid copolymer, the D2 binder is said to be an ethylene-
propylene-methyl acrylic acid copolymer, the D3 binder is
said to be an ethylene-propylene-methacrylic acid
copolymer, and the D4 binder is said to be an ethylene-
propylene-methyl methacrylic acid copolymer. (Br. 14;
Examples 14-17 of the Specification.)
18. Appellants have not established how a person having
ordinary skill in the art would have viewed the electrode
strength differences reported in Table 17.
19. Table 18 of the present Specification reports discharge
capacity at -20 degrees C and electrode strength as a
function of ethylene and propylene contents.
20. Table 18 does not compare the claimed invention against the
closest prior art.
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21. Appellants have not demonstrated results commensurate in
scope with the claims.

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
To satisfy the written description requirement of 35 U.S.C. § 112, ¶1,
the disclosure of the application as originally filed must reasonably convey
to any person skilled in the relevant art that the applicants, as of the filing
date of the original application, had possession of the claimed invention. In
re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996); In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
A claim is definite, and thus complies with 35 U.S.C. § 112, ¶2, if it
would have reasonably apprised one skilled in the relevant art of its scope.
Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18
USPQ2d 1016, 1030 (Fed. Cir. 1991). Claim definiteness is not analyzed
“in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). That is, a claim complies with the
second paragraph of Section 112 if, when read in light of the specification, it
would have reasonably apprised those skilled in the relevant art of the scope
of the invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986).
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The factual inquiry into whether claimed subject matter would have
been obvious includes a determination of: (1) the scope and content of the
prior art; (2) the differences between the claimed subject matter and the prior
art; (3) the level of ordinary skill in the art; and (4) secondary considerations
(e.g., the problem solved) that may be indicia of (non)obviousness. Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Recently, the
Supreme Court of the United States stated that the “analysis [of whether the
subject matter of a claim would have been obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v.. Teleflex,
Inc., 127 S. Ct. 1727, ___, 82 USPQ2d 1385, 1396 (2007); see also DyStar
Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need
not be found in the references sought to be combined, but may be found in
any number of sources, including common knowledge, the prior art as a
whole, or the nature of the problem itself.”); In re Boesch, 617 F.2d 272,
276, 205 USPQ 215, 219 (CCPA 1980)(“[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)(“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160 USPQ 809,
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811-812 (CCPA 1969) (“[I]t is proper to take into account not only specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom...”).
“When the PTO shows prima facie obviousness, the burden then shifts
to the applicant[s] to rebut.” In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d
1451, 1454 (Fed. Cir. 1997). “Such rebuttal or argument can consist of a
comparison of test data showing that the claimed compositions possess
unexpectedly improved properties or properties that the prior art does not
have...” In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.
Cir. 1990)(en banc).

ANALYSIS
I. Written Description: Claims 5, 10, 15, and 20
The Examiner’s position is that “[t]he claims recite the binder
comprises –COO- Na+ or –COO- K+, which is not enabled by the
specification,” and “these groups are part of an intermediate product to
obtain the binder” rather than the binder itself. (Examiner’s Answer 2-3.)
We cannot affirm on these bases.
It is well settled that enablement and written description requirements
of 35 U.S.C. § 112, ¶1, are not necessarily coextensive and are, in fact,
independent. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 921,
69 USPQ2d 1886, 1891 (Fed. Cir. 2004), reh’g denied, 37 F.3d 803, cert.
denied, 543 U.S. 1015 (2004)(“Although there is often significant overlap
between the three requirements [of written description, enablement, and best
mode], they are nonetheless independent of each other.”). Even assuming
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lack of enablement was before us, the Examiner failed to prove lack of
enablement because the Examiner did not undertake the requisite factual
inquiry to establish the need for undue experimentation to make and/or use
the invention. In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400,
1402, 1404 (Fed. Cir. 1988).
The subject matter of claims 5, 10, 15, and 20 was expressly described
not only in the Specification, as originally filed, but also in original claim 5.
(Specification 5:22-31; original claim 5.) In re Gardner, 475 F.2d 1389,
1391, 177 USPQ 396, 397 (CCPA 1973)(“Claim 2, which apparently was an
original claim, in itself constituted a description in the original disclosure
equivalent in scope and identical in language of the total subject matter now
being claimed ... Nothing more is necessary for compliance with the written
description requirement with the first paragraph of 35 U.S.C. § 112.”)
For these reasons, we cannot say that the Examiner has established
lack of written description as to claims 5, 10, 15, and 20.

II. Definiteness: Claims 5, 10, 15, and 20
The Examiner’s position that claims 5, 10, 15, and 20 are indefinite is
based on the belief that these claims improperly broaden the claims from
which they depend because “[a] binder comprising –COO- Na+ or –COO- K+
groups is not encompassed by claims 1 and/or 11.” (Examiner’s Answer 3.)
Again, the Examiner’s position is not well founded.
The Specification clearly indicates to one skilled in the relevant art
that the term “acrylate” or “methacrylate,” which is a comonomer in the
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binder copolymer, is inclusive of sodium or potassium salts of (meth)acrylic
acid, such as potassium (meth)acrylate. (Specification 5:22-31.) This
lexicography is consistent with the ordinary dictionary definitions of
(meth)acrylate. (Webster’s New World Dictionary 13, 853 (3rd ed., 1991),
Evidence Appendix #1.)
Thus, the Examiner’s rejection is in error.

III. Obviousness: Claims 1-20
With respect to the 35 U.S.C. § 103(a) rejection, Appellants have
argued claims 16-19 separately from the other claims (namely claims 1-15
and 20). (Br. 15.) We select claim 1 as representative of claims 1-15 and 20
and claim 16 as representative of claims 16-19. We therefore confine our
discussion to these two representative claims. In this regard, arguments not
made are waived. 37 CFR § 41.37(c)(vii).
Turning to the merits, Boer describes (in a working example) a battery
cell, which is cycled 3 and 25 times (i.e., rechargeable), comprising an
electrode A or B used to form lithium/LiCoO2 cells and an electrolyte
composed of 80% methyl formate (52 ppm water), 20% dimethyl carbonate
(697 ppm water), 2.0M LiAsF6, and 0.4M LiBF4. (Col. 10: 25 to col.
11:40.) The electrode is said to be a composite electrode of aluminum
screen encapsulated in a matrix composition formed of a mixture of high
density, ultra-high weight average molecular weight (5,000,000)
polyethylene, high density polyethylene having a weight average molecular
weight of 250,000, graphite, carbon black, and lithiated cobalt oxide. (Col.
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10: 27 to col. 11:8.) Boer also teaches alternative polymers for the matrix
composition as follows (col. 5:6-18):
The polymer component of the sheet matrix may be a
polyolefin having a weight average molecular weight of at least
75,000 and can be selected from polyolefins having a weight
average molecular weight of from 75,000 to about 5,000,000.
The polyolefin can be selected from homopolymers, such as
polyethylene or polypropylene or copolymers formed from a
mixture of hydrocarbon olefin group (-HC=CH-) containing
monomers, such as ethylene, propylene, butene and the like, or
from a mixture of at least 80 percent, preferably at least 90
percent by weight of such hydrocarbon olefinic monomer with
other olefinic group containing monomer, such as acrylic and
alkacrylic acids or their esters. [Emphases added.]

That Boer describes a non-aqueous electrolyte battery comprising a
rechargeable positive electrode, a non-aqueous liquid electrolyte, and a
negative electrode comprising a negative electrode on a current collector is
not contested. (Br. 11-15.) Nor do the Appellants dispute the Examiner’s
factual finding that Boer teaches a negative electrode material comprising a
mixture of (1) a graphite capable of absorbing and desorbing lithium and (2)
a ethylene-propylene interpolymer binder. (Examiner’s Answer at 3-5; Br.
11-15.) Rather, it is Appellants’ position that Boer does not disclose the
“general conditions” of the claimed subject matter because it “would
dissuade the person of ordinary skill in the art from investigating a
copolymer (i.e. a terpolymer) in which ethylene, propylene, and a third
monomer, such as acrylic acid, alkacrylic acid, or an ester thereof, were all
present” in the specified ethylene-propylene amount and that Tables 17 and
18 of the specification contain evidence of criticality. (Br. 11-15.)
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A reference “teaches away” if a person of ordinary skill in the art
would have been discouraged or led to a divergent path from the one taken
by the inventors. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132
(Fed. Cir. 1994)(“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.”).
Here, rather than discourage, Boer’s teaching (col. 5:6-18) suggests to
one of ordinary skill in the art that the ethylene-propylene-acrylic acid or the
ethylene-propylene-acrylate terpolymer recited in appealed claim 1 would be
useful as a matrix (binder) polymer. In re Fulton, 391 F.3d 1195, 1201, 73
USPQ2d 1141, 1146 (Fed. Cir. 2004)(“[M]ere disclosure of alternative
designs does not teach away.”); In re Gurley, 27 F.3d at 553, 31 USPQ2d at
1132 (“Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance. A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.”).
Turning to the ethylene-propylene content, Boer teaches that the
olefin monomers, which includes a mixture of ethylene and propylene, may
constitute “at least 80 percent...by weight” (col. 5:14-16) when
interpolymerized with the “other olefinic group containing monomer, such
as acrylic...acids or their esters” (col. 5:15-18). Hence, we share the
examiner’s view that Boer’s teachings would have led one of ordinary skill
in the art to arrive at the subject matter of appealed claim 1. The significant
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overlap (and virtual identity) between Boer’s disclosed range of ethylene-
propylene content (at least 80 percent to less than 100%) and the claimed
range (“70-95%”) compels a conclusion that a person having ordinary skill
in the art would have found the subject matter of appealed claim 1 at least
prima facie obvious in view of the applied prior art. In re Peterson, 315
F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003)(“In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”).
Appellants argue that the lower limit of 70% by weight of the
“ethylene-propylene weight content” (i.e., the combined weight of the
ethylene and propylene relative to the weight of all the monomers) is not
taught in the reference. (Br. 13.) This argument is unpersuasive because
any value within the claimed range is a description of the claim limitation in
question. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1946 (Fed. Cir. 1999)(“[W]hen a patent claims a chemical
composition in terms of ranges of elements, any single prior art reference
that falls within each of the ranges anticipates the claim.”). That appealed
claim 1 is broader than the prior art in terms of reciting a lower minimum
ethylene-propylene content is not a basis upon which the claim can be found
to be patentable over the prior art.
Appellants contend that “‘obvious to try’ is not to be equated with
obviousness under 35 U.S.C. § 103.” (Br. 13.) We find this argument
unpersuasive because the applied prior art itself provides a suggestion to
arrive at the claimed subject matter, as we discussed above. Moreover, the
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Supreme Court has expressly rejected “obvious to try” as a “constricted
analysis.” KSR, 127 S. Ct. at ___, 82 USPQ2d at 1397 (“[A] patent claim
cannot be proved obvious merely by showing that the combination of
elements was ‘obvious to try.’...When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.”).
Appellants urge that the data tabulated in Table 17 (Specification 37)
demonstrate that the claimed range of 70-95% ethylene-propylene content is
critical. (Br. 14.) Specifically, Appellants argue that the data show that the
discharge capacity at -20 degC (mAh)2 drops significantly when the
ethylene propylene content of the binder is less than 70%. They further
assert that when the ethylene-propylene content exceeds 95%, the electrode
strength3 drops to an unacceptable level.

2 According to the present Specification, “low-temperature discharge
characteristic was assessed by discharging at a constant discharge current of
900 mA until a discharge termination voltage of 3.0 V is reached after a
constant-current constant-voltage charging at a charging current of 630 mA
at a charging voltage of 4.2 V for a charging time of 2 hours in a -20 degrees
C environment.” (Specification 13:5-9.)

3 According to the present Specification, “[s]trength of the negative
electrode was tested by applying 1.5 cm-square cellophane adhesive tape on
the surface of the negative electrode and measuring the force required to
peel off the negative electrode mix...” (Specification 13: 9-11.) No further
explanation is given on how the force is determined. Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1343, 60 USPQ2d 1851, 1855 (Fed. Cir.
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We have considered this evidence but do not find it outweighs the
evidence of obviousness. Table 17 includes data for four classes of batteries
(D1-D4) in which the ethylene-propylene content of the binder polymer is
varied (60%, 70%, 80%, 95%, and 98%) and the corresponding discharge
capacities and electrode strengths are determined. The D1 binder is said to
be an ethylene-propylene-acrylic acid terpolymer, the D2 binder is said to be
an ethylene-propylene-methyl acrylic acid terpolymer, the D3 binder is said
to be an ethylene-propylene-methacrylic acid terpolymer, and the D4 binder
is said to be an ethylene-propylene-methyl methacrylic acid terpolymer.
(Br. 14; Examples 14-17 of the Specification.)
The alleged criticality of the 70% lower limit for the ethylene-
propylene content is irrelevant because Boer teaches at least 80% by weight
for the mixture of hydrocarbon olefin group-containing monomers when
they are interpolymerized with another olefinic group containing monomer
such as acrylic acid. (Col. 5: 10-18.) As to the recited 95% by weight
ethylene-propylene content upper limit, the electrode strengths are alleged to
be “2” at 95% by weight and “1” at 98% by weight for batteries D1 and D4.
Appellants have not directed us to any evidence establishing that a person
having ordinary skill in the art would have considered a difference of “2”
versus “1” to be unexpected, especially where no explanation is given as to
how the value of “2” or “1” is determined. In this regard, it is not enough to
merely establish a difference in results – the results must be shown to be
unexpected to a person having ordinary skill in the art. In re Harris, 409
2001)(explaining that the parties are responsible for providing all relevant
arguments and pointing out with specificity the relevant support for their
arguments); 37 CFR § 41.37(c)(vii).
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F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005)(“The 32-43%
increase in stress-rupture life, however, does not represent a ‘difference in
kind’ that is required to show unexpected results.”)(citing In re Huang, 100
F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir. 1989)).
With respect to separately argued claim 16, Appellants rely on the
data presented in Table 18 (Specification 38). (Br. 15.) Table 18 reports the
discharge capacity at -20 degrees C and electrode strength as a function of
ethylene and propylene contents. According to Appellants, discharge
capacity “decreases rapidly when less then [sic, than] 20% of ethylene and
more than 80% of propylene is present in the copolymer.” However, there is
no comparison of the claimed invention against the closest prior art, i.e.,
Boer’s working example using polyethylene. In re Baxter Travenol Labs,
952 F.2d 388, 392, 21 USPQ 1281, 1285 (Fed. Cir. 1991) (“[R]esults must
be shown to be unexpected compared with the closest prior art.”).
Lastly, we are not persuaded that the relied upon evidence is
commensurate in scope with the degree of patent protection desired. In re
Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir.
1990)(“‘[O]bjective evidence of nonobviousness must be commensurate in
scope with the claims.’”)(quoting In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972)); In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979) (“The evidence presented to rebut a prima facie case
of obviousness must be commensurate in scope with the claims to which it
pertains.”). As discussed, the burden of coming forward with unexpected
results is on the applicants. Appellants have not demonstrated that the
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alleged results can be reasonably extrapolated to all positive electrodes, all
liquid electrolytes, all current collectors and all types of graphite.

CONCLUSIONS OF LAW
On the record before us, the Examiner erred in rejecting claims under
35 U.S.C. § 112. We conclude, however, that appealed claims 1-20 would
have been obvious to a person having ordinary skill in the art in view of the
applied prior art teaching.

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DECISION
The Examiner’s rejection under 35 U.S.C. § 112, ¶1, of claims 5, 10,
15, and 20 is REVERSED.
The Examiner’s rejection under 35 U.S.C. § 112, ¶2, of claims 5, 10,
15, and 20 is REVERSED.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1-20 is
AFFIRMED.
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1-4 and
11 is DISMISSED.

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AFFIRMED

RATNER PRESTIA
PO BOX 980
VALLEY FORGE PA 19482-0980

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