Nobuyuki NAGANAWA et al.

Patent Trials and Appeals Board

Oct 2, 2020

13536780 - (D) (P.T.A.B. Oct. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/536,780 06/28/2012 Nobuyuki NAGANAWA FP-4318-US 5146
21254 7590 10/02/2020
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
10/02/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NOBUYUKI NAGANAWA, TOMONORI KISHIMOTO,
MASAMITSU TONONISHI, SHINSUKE YOSHITAKE, and
YASUNORI OKUNO

____________

Appeal 2019-006295
Application 13/536,780
Technology Center 1700
____________

Before CATHERINE Q TIMM, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1, 3, 11, 12, 21, 22, and 24–26.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies GS Yuasa International Ltd. and Honda
Motor Co., Ltd. as the real parties in interest. Appeal Brief filed February
19, 2019 (“Appeal Br.”) at 1.
2 Non-Final Office Action entered September 17, 2018 (“Office Act.”) at 1.
Although the Office Action lists claim 23 as rejected, Appellant cancelled
claim 23 in an amendment filed April 5, 2018, and the Examiner confirmed
entry of the amendment in an Advisory Action entered May 1, 2018.
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CLAIMED SUBJECT MATTER
Appellant claims an electric storage device. Appeal Br. 2–5. Claim 1,
the sole pending independent claim, illustrates the subject matter on appeal,
and reads as follows:
1. An electric storage device, comprising:
an electrode assembly including a positive electrode plate
and a negative electrode plate that are insulated from each
other;
a pair of current collectors, each of which includes a
connecting portion and is connected to a corresponding one of
the positive electrode plate and the negative electrode plate at
the connecting portion;
a case that houses the electrode assembly and the pair of
current collectors, the electrode assembly being supported by
the pair of current collectors in the case;
a cover plate which covers a top surface of the case, the
cover plate extending above an upper surface of the electrode
assembly; and
a distance retaining member that retains a distance
between portions more distal than respective connecting
portions of the pair of current collectors,
wherein each connecting portion includes an outer face
that faces an inner surface of the case and an inner face that
faces the electrode assembly,
wherein the distance retaining member comprises a
spacer that connects the pair of current collectors in the case
while supporting inner faces of the current collectors,
wherein the spacer includes:
a first coupler including a first support face that
faces the inner surface of the case and abuts the inner face of
the current collector of one of the pair of current collectors,
and a second support face that faces the electrode assembly and
abuts an outer face of the current collector of said one of the
pair of current collectors;
a second coupler including a third support face that
faces the inner surface of the case and abuts the inner face of
the current collector of another of the pair of current collectors,
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and a fourth support face that faces the electrode assembly and
abuts an outer face of the current collector of the other one of
the pair of current collectors; and
a bridge portion connecting the first coupler with
the second coupler, a bottom surface of the bridge portion
extending below a bottom surface of the electrode assembly,
wherein the first support face protrudes from the distance
retaining member in a perpendicular direction to a longitudinal
direction of an extension of the electrode assembly,
wherein the spacer is electrically insulating, and
wherein the first support face continuously extends from
the bottom surface of the bridge portion.

Appeal Br. 13–14 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered July 2, 2019 (“Ans.”):
I. Claim 24 under 35 U.S.C. § 112, second paragraph as being
indefinite for failing to particularly point out and distinctly claim the subject
matter that the applicant regards as the invention; and
II. Claims 1, 3, 11, 12, 21, 22, and 24–26 under 35 U.S.C. § 103(a)
as unpatentable over Kim I (US 2011/0081573 A1) in view of Kim II (US
2011/0250491 A1) and Tanaka (JP 2010-231945).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1, 3, 11, 12, 21, 22, and 24–26 under 35 U.S.C. § 103(a), for the
reasons set forth in the Appeal and Reply Briefs, and below. We summarily
affirm the Examiner’s rejection of claim 24 under 35 U.S.C. § 112, second
paragraph because Appellant does not contest this rejection.
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Rejection I
We summarily sustain the Examiner’s rejection of claim 24 under
35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter that the
applicant regards as the invention because Appellant does not contest this
rejection. Appeal Br. 6–11; 37 C.F.R. § 41.37(c)(1)(iv); see also Manual of
Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner’s answer.”).
Rejection II
We now address the Examiner’s rejection of claims 1, 3, 11, 12, 21,
22, and 24–26 under 35 U.S.C. § 103(a) as unpatentable over Kim I in view
of Kim II and Tanaka.
Claim 1 requires the recited electric storage device to comprise, in
part, a distance retaining member comprising a spacer that includes first and
second couplers and a bridge portion. Claim 1 requires the first coupler to
include a first support face that faces the inner surface of a case, abuts the
inner face of a current collector, protrudes from the distance retaining
member (spacer) in a perpendicular direction to a longitudinal direction of
an extension of an electrode assembly, and continuously extends from the
bottom surface of the bridge portion of the spacer.
Kim I discloses rechargeable battery 110 comprising electrode
assembly 10 including positive electrode 11 and negative 12 electrode, and
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buffer sheet 40 (distance retaining member, spacer), mounted in case 15.
Kim I ¶¶ 27, 28, 36; Fig. 2. Kim I discloses that rechargeable battery 110
further comprises cap assembly 20, which includes cap plate 28 (cover plate)
that seals case 15. Kim I ¶¶ 27, 32; Fig. 2. Kim I discloses that that cap
assembly 20 also includes positive terminal 21, which is electrically
connected to positive electrode 11 via first lead tab 31 (first current
collector), and negative terminal 22, which is electrically connected to
negative electrode 12 via second lead tab 32 (second current collector).
Kim I ¶¶ 32, 35; Fig. 2.
Kim I discloses that buffer sheet 40 (distance retaining member,
spacer) includes first and second side support plates 43 (first and second
couplers) and bottom support plate 41 (bridge portion). Kim I ¶ 38; Fig. 3.
Kim I discloses that first and second side support plates 43 (first and second
couplers) of buffer sheet 40 (distance retaining member, spacer) directly
contact first 31 and second 32 lead tabs (first and second current collectors),
respectively, to “support electrode assembly 10 in a stable manner,”
preventing electrode assembly 10 from being shaken “even under
application of an external impact or vibration.” Kim I ¶¶ 36, 49, 50; Fig. 2.
The Examiner finds that Kim I does not disclose that first and second
side support plates 43 (first and second couplers) include support faces that
face the inner surface of case 15, abut the inner faces of first 31 and second
32 lead tabs (first and second current collectors), respectively, and protrude
from buffer sheet 40 in a direction perpendicular to a longitudinal direction
of an extension of electrode assembly 10. Office Act. 6. The Examiner
relies on Kim II for suggesting modification of Kim I’s first and second side
support plates 43 (first and second couplers) to include such support faces.
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Office Act. 6–8.
Kim II discloses rechargeable battery 200 comprising electrode
assembly 10 including lead tab 53, retainer 63, and case 20. Kim II ¶¶ 63,
64, 65; Fig. 6. Kim II discloses that lead tab 53 includes current collector
portion 532. Kim II ¶ 65; Fig. 6. Kim II discloses that retainer 63 includes
buffer 633, a pair of first hooks 631, and second hook 632 (coupler). Kim II
¶ 65; Fig. 6.
Kim II discloses stably installing retainer 63 at three points on current
collector portion 532 of lead tab 53 by hooking first hooks 631 onto the
sides of current collector portion 532, and hooking second hook 632
(coupler) into installing hole 533 on current collector portion 532. Id.
Figures 6 and 7 of Kim II show that second hook 632 (coupler) includes a
support face (first support face) that faces an inner surface of case 20, abuts
an inner face of current collector portion 532, and protrudes in a direction
perpendicular to a longitudinal direction of an extension of electrode
assembly 10. Kim II discloses that retainer 63 fixes the position of electrode
assembly 10 in case 20, preventing electrode assembly 10 from moving in
case 20, and providing electrode assembly 10 with resistance to vibration.
Kim II ¶ 66.
In view of these disclosures in Kim II, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify first
and second side support plates 43 (first and second couplers) of Kim I’s
rechargeable battery 110 to each include first 631 and second 632 hooks as
disclosed in Kim II having support faces that face an inner surface of Kim
I’s case 15 and abut the inner faces of Kim I’s first 31 and second 32 lead
tabs (first and second current collectors), so as to more stably attach side
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support plates 43 (first and second couplers) to first 31 and second 32 lead
tabs (first and second current collectors). Office Act. 7.
The Examiner finds that Kim I and Kim II do not disclose extending
the first support face of Kim II’s second hook 632 continuously from bottom
support plate 41 (bridge portion) of Kim I’s buffer sheet 40 (distance
retaining member, spacer). Id. The Examiner determines, however, that it
would have been obvious to rearrange the position of Kim II’s first 631 and
second 632 hooks, taking into consideration the size and shape of Kim I’s
first 31 and second 32 lead tabs (first and second current collectors), to any
location where the first support faces of hooks 631, 632 could effectively
attach to Kim I’s first 31 and second 32 lead tabs (first and second current
collectors), so as to stably attach hooks 631, 632 onto first 31 and second 32
lead tabs 31 (first and second current collectors). Office Act. 7 (citing MPEP
§ 2144.04 VI. C; In re Japikse, 181 F.2d 1019 (CCPA 1950); In re Kuhle,
526 F.2d 553 (CCPA 1975)).
The Examiner also relies on Tanaka’s disclosure of rechargeable
battery 20 including cathode contact button 6 (first current collector) fixed to
the end of cathode support component 10 (distance regaining member,
spacer), and anode contact button 7 (second current collector) fixed to the
end of anode support component 11 (distance regaining member, spacer),
inside case 3. Office Act. 7–8; Tanaka ¶ 10; Fig. 1. Tanaka discloses that
cathode support component 10 and anode support component 11 (spacers)
touch the bottom of case 3, and Tanaka explains that this structural
arrangement prevents cathode 6 and anode 7 contact buttons (first and
second current collectors) from shaking when battery 20 is subject to
vibration, which prevents damage to the power generating elements of
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battery 20. Tanaka ¶¶ 7, 35; Fig. 1.
In view of these disclosures in Tanaka, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify the
length of Kim I’s first 31 and second 32 lead tabs (first and second current
collectors) to extend substantially to support plate 41 (bridge portion) of
Kim I’s buffer sheet 40 (distance retaining member, spacer) as taught by
Tanaka, and to position the first support face of Kim II’s second hook 632
(coupler) so that it extends continuously from a bottom surface of Kim I’s
support plate 41 (bridge portion), to more stably or effectively attach first
support faces of Kim II’s second hook 632 (coupler) to Kim I’s first 31 and
second 32 lead tabs (first and second current collectors), thereby improving
the vibration resistance of Kim I’s electrode assembly 10. Office Act. 8.
Appellant argues that the Examiner picks and chooses different
elements and functions from the devices disclosed in Kim II and Tanaka,
and proposes modifying Kim I’s device with those elements and functions so
that Kim I’s device “appear[s] to have a structure similar to the claimed
invention.” Appeal Br. 9. Appellant argues that the Examiner, therefore, “is
improperly using the claimed invention as a roadmap and [] one of ordinary
skill in the art would not have combined the references as alleged by the
Examiner.” Id.
Appellant’s arguments identify reversible error in the Examiner’s
rejection. As discussed above, Kim II discloses installing retainer 63 at
three points on current collector portion 532 of lead tab 53 of Kim II’s
rechargeable battery 200 by hooking first hooks 631 onto the sides of current
collector portion 532, and hooking second hook 632 (coupler) into installing
hole 533 on current collector portion 532. In this configuration, second
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hook 632 (coupler) includes a support face (first support face) that faces an
inner surface of case 20, abuts an inner face of current collector portion 532,
and protrudes in a direction perpendicular to a longitudinal direction of an
extension of electrode assembly 10.
On the record before us, however, the Examiner does not identify any
disclosure in Kim I, Kim II, or Tanaka that would have suggested modifying
Kim I’s rechargeable battery 110 to incorporate retainer 63 as disclosed in
Kim II so that the first support face of second hook 632 (coupler) extends
continuously from bottom support plate 41 of Kim I’s buffer sheet 40
(distance retaining member, spacer). The Examiner does not persuasively
explain why one of ordinary skill in the art would have disposed second
hook 632 (coupler) in this manner to extend continuously from Kim I”s
buffer sheet 40 (distance retaining member, spacer), rather than hooking
second hook 632 (coupler) into an installing hole on Kim I’s lead tab 31
(first current collector) as disclosed in Kim II.
Although the Examiner determines, citing MPEP § 2144.04 VI. C,
that it would have been obvious to rearrange the position of Kim II’s first
631 and second 632 hooks to any location where they could stably attach
onto Kim I’s first 31 and second 32 lead tabs (first and second current
collectors), the section of the MPEP cited by the Examiner in support of this
determination goes on to state that “[t]he mere fact that a worker in the art
could rearrange the parts of the reference device to meet the terms of the
claims on appeal is not by itself sufficient to support a finding of
obviousness. The prior art must provide a motivation or reason for the
worker in the art, without the benefit of appellant’s specification, to make
the necessary changes in the reference device.” MPEP § 2144.04 VI. C
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(citing Ex parte Chicago Rawhide Mfg. Co., 223 USPQ351, 353 (BPAI
1984)). The Examiner’s conclusory assertion that it would have been
obvious to rearrange the position of Kim II’s second 632 hook to any
location where it could stably attach onto Kim I’s first 31 and second 32 lead
tabs (first and second current collectors) does not identify any reason that
would have led one of ordinary skill in the art to rearrange the position of
Kim II’s second 632 hook so that the first support face of second hook 632
(coupler) extends continuously from bottom support plate 41 of Kim I’s
buffer sheet 40 (distance retaining member, spacer) as required by claim 1.
The Examiner also does not does not provide a persuasive, reasoned
explanation for why Tanaka’s disclosure of fixing cathode contact button 6
(first current collector) to the end of cathode support component 10 (distance
regaining member, spacer), and fixing anode contact button 7 (second
current collector) to the end of anode support component 11 (distance
regaining member, spacer), would have led one of ordinary skill in the art to
position the first support face of Kim II’s second hook 632 (coupler) so that
it extends continuously from a bottom surface of Kim I’s support plate 41
(bridge portion).
Although the Examiner asserts that the relied-upon disclosures in
Tanaka would have suggested extending Kim I’s first 31 and second 32 lead
tabs (first and second current collectors) to bottom support plate 41 of Kim
I’s buffer sheet 40, which “would provide a reason to rearrange the hook as
taught by Kim [II] (which includes the first support face) to continuously
extend from the bridge portion” (Ans. 14), this conclusory assertion does
persuasively explain why or how Tanaka’s disclosure of extending current
collectors to the end of support elements would have suggested modifying
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Kim I’s rechargeable battery 110 to incorporate retainer 63 as disclosed in
Kim II so that the first support face of second hook 632 (coupler) extends
continuously from bottom support plate 41 of Kim I’s buffer sheet 40
(distance retaining member, spacer) as required by claim 1. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418–19 (2007) (explaining that “because
inventions in most, if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be combinations
of what, in some sense, is already known,” “it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”);
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”).
Consequently, on the record before us, Examiner does not provide
sufficient evidence and reasoning to establish that one of ordinary skill in the
art would have been led to modify Kim I’s rechargeable battery 110 in the
manner proposed so as to arrive at an electric storage device having the
features recited in claim 1.
We, accordingly, do not sustain the Examiner’s rejection of claims 1,
3, 11, 12, 21, 22, and 24–26 under 35 U.S.C. § 103(a) as unpatentable over
Kim I in view of Kim II and Tanaka.

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CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24 112,
second
paragraph
Indefiniteness 24
1, 3, 11, 12,
21, 22, 24–26
103(a) Kim I, Kim II,
Tanaka
1, 3, 11, 12,
21, 22, 24–26
Overall
Outcome
24 1, 3, 11, 12,
21, 22, , 25,
26

AFFIRMED IN PART