Ex Parte Yoon et alDownload PDFBoard of Patent Appeals and InterferencesFeb 8, 201212436556 (B.P.A.I. Feb. 8, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JUNILL YOON, JONG-YUL RO, SEUNGJAE YOU, JISANG YU, and JOHN E. NAMGOONG ____________ Appeal 2010-011030 Application 12/436,556 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and JAMES C. HOUSEL, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. §134 from the Examiner's rejection under 35 U.S.C. § 103(a) of claims 1-5 as unpatentable over Watanabe (US 2003/0170535 A1, pub. Sep. 11, 2003) in view of Hoynes (US 2,666,800, issued Jan. 19, 1954). We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2010-011030 Application 12/436,556 2 Appellants claim a method for manufacturing a secondary battery comprising welding a cathode lead (e.g., of aluminum) 30 to a bus bar (e.g., of copper) 50 when the cathode lead is not coupled to the secondary battery and welding the cathode lead to a cathode tap 10 after welding the cathode lead to the bus bar (independent claims 1, 5; Fig. 2). According to the Specification, the method avoids battery damage caused by transmission of welding heat into the battery (Spec. paras. [0013], [0023], and [0024]). Representative claim 1 reads as follows: 1. A method for manufacturing a secondary battery, comprising: welding a cathode lead to a bus bar when the cathode lead is not coupled to the secondary battery to avoid transferring heat energy to the secondary battery during the welding of the cathode lead to the bus bar, the cathode lead being constructed of a first type of metal, the bus bar being constructed from a second type of metal different than the first type of metal; and welding the cathode lead to a cathode tap of the secondary battery after welding the cathode lead to the bus bar, the cathode tap being constructed of the first type of metal. The Examiner acknowledges that Watanabe does not teach welding a cathode lead to a bus bar when the lead is not coupled to the battery but finds that Hoynes discloses "[s]pot welding of a metal strip to a completed [battery] cell frequently damages the cell by the heat of the welding operation, and the strips are subject to corrosive action by the gasses" (col. 1, ll. 18-22) (Ans. para. bridging 4-5). In light of this finding, the Examiner concludes that "it would have been obvious . . . to thermally weld the cathode lead to the bus bar of Watanabe . . . prior to being coupled to the Appeal 2010-011030 Application 12/436,556 3 battery . . . in order to prevent damage to the cell from the heat of the welding operation" (id.). Appellants emphasize that Hoynes teaches a mechanical coupler for avoiding battery damage caused by welding and argue that neither Watanabe nor Hoynes contains any teaching or suggestion of avoiding such damage by the independent claim steps of welding a cathode lead to a bus bar when the lead is not coupled to the battery and welding the lead to a cathode tap of the battery after welding the lead to the bus bar (Br. 8-11). Appellants' argument is persuasive. "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). The Examiner has not underpinned the above obviousness conclusion with a rational explanation of how an artisan would have modified the method of Watanabe so as to include the welding steps required by the independent claims. In this regard, we observe that Watanabe's battery comprises laminate cells whose tabs (i.e., leads) are welded to plates located inside the outer cell wall (see, e.g., paras. [0074], [0185], Figs. 21A, 21B). The Examiner has not explained how an artisan would have first welded these tabs/leads to bus bars and subsequently welded the tabs/leads to such internally-located plates. The record before us provides no rational support Appeal 2010-011030 Application 12/436,556 4 for the proposition that the subsequent welding step would be even possible.1 On this record, the Examiner's obviousness conclusion is merely a conclusory statement unsupported by rational underpinning. We cannot sustain, therefore, the § 103 rejection of claims 1-5 as unpatentable over Watanabe in view of Hoynes. The decision of the Examiner is reversed. REVERSED ssl 1 Appellants’ method presents no such dilemma because the subsequent welding step connects cathode lead 30 to a cathode tap 10 which extends outside the cell wall/case 102 (Fig. 2). Copy with citationCopy as parenthetical citation