Ex Parte Kim

Board of Patent Appeals and Interferences

Jul 12, 2012

11410507 (B.P.A.I. Jul. 12, 2012)

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.
11/410,507 04/24/2006 Changsik Kim 57556/S1170 2897
23363 7590 07/12/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
MARTIN, ANGELA J
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
07/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHANGSIK KIM
____________

Appeal 2012-002770
Application 11/410,507
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 4-9, and 21. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellant claims a battery sheath comprising a second insulation layer
(e.g., polyethylene terephthalate (PET)) which comprises rubber particles
and "solubilizer surrounding the rubber particles" (claim 1).

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Application 11/410,507

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Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A battery sheath comprising:

a ferrite stainless steel layer having a first surface and a second
surface;

a first insulation layer formed on the first surface of the ferrite
stainless steel layer; and

a second insulation layer formed on the second surface of the ferrite
stainless steel layer, the second insulation layer comprising rubber particles
and solubilizer surrounding the rubber particles.

The following rejections are advanced in the Examiner's Answer.1
The Examiner rejects independent claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Yamashita et al. (WO 2000/062354, pub. Oct. 19,
2000); US 7,285,334 B1 is used as the English equivalent) in view of Shiota
et al. (US 6,482,544 B1, patented Nov. 19, 2002), Honma et al. (WO
2004/060658, pub. Jul. 22, 2004); US 2006/0110599 A1 is used as the
English equivalent), and Cahill (US 2004/0241418 A1, pub. Dec. 2, 2004).
The Examiner correspondingly rejects the dependent claims over
these references alone or in combination with additional prior art of record.2

1 The provisional obviousness-type double patenting rejection set
forth in the Final Office Action (FOA 7) is not presented in the Answer. For
this reason, we regard the provisional rejection as not before us in this
appeal.
2 As presented in the Answer, the separate § 103 rejection of
dependent claims 5 and 21 fails to list the Honma and Cahill references in
the statement of rejection (Ans. 8). This failure is harmless to Appellant
particularly since these dependent claims have not been separately argued.
Appeal 2012-002770
Application 11/410,507

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Appellant's arguments are directed to sole independent claim 1 only.
Therefore, the dependent claims on appeal will stand or fall with claim 1.
We sustain the Examiner's § 103 rejections for the reasons expressed
in the Answer. The following comments are added for emphasis.
Appellant does not dispute the Examiner's conclusion that it would
have been obvious to provide the PET layer of Yamashita with rubber
particles in order to enhance impact resistance as taught by Honma (see Ans.
7). Rather, the controversy in this appeal involves the Examiner's
conclusion that it would have been obvious to provide the so-modified layer
of Yamashita with a compatibilizing agent (i.e., solubilizer) in order to
obtain good adhesion between the PET and the rubber particles as taught by
Cahill (id.).
We find no convincing merit in Appellant's argument that Cahill is
nonanalogous art because it allegedly is not reasonably pertinent to the
particular problem with which Appellant was concerned (App. Br. 4-10).
The scope of analogous art is to be construed broadly. Wyers v. Master Lock
Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme Court's decision
in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 . . . (2007), directs
us to construe the scope of analogous art broadly"). Here, Cahill is directed
toward the same problem Appellant was trying to solve, namely, improving
adherence between PET and rubber particles (see Spec. para. [0024] in
comparison with Cahill para. [0016]).
We also are unpersuaded by Appellant's argument that those with
ordinary skill in this art would not have modified Yamashita using Cahill
(App. Br. 10-11). The record supports the Examiner's determination that an
artisan would have provided the modified layer of Yamashita with a
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Application 11/410,507

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compatibilizer (i.e., solubilizer) in order to obtain good adhesion between
the PET and the rubber particles as taught by Cahill. Appellant fails to
reveal any error in this determination.
Finally, we cannot agree with Appellant's contention that "Cahill does
not teach or suggest that the 'compatibilizing agent' surrounds the rubber
particles" as required by the appealed claims (App. Br. 11). The teachings
of Cahill would have suggested surrounding the rubber particles with
compatibilizing agent in order to ensure achieving the desired function of
compatibilizing these particles with the PET. Stated differently, it would
have been obvious for an artisan to ensure compatibilization of the rubber
particles with the PET as taught by Cahill by surrounding the particles with
compatibilizing agent.
The decision of the Examiner is affirmed.
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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