Ex Parte Yoon et al

Board of Patent Appeals and Interferences

Feb 8, 2012

12436556 (B.P.A.I. Feb. 8, 2012)

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).