Ex Parte Feil et al

Board of Patent Appeals and Interferences

Sep 13, 2010

10480360 - (D) (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte HANS FEIL
and MARTINUS JACOBUS JOHANNES HACK
______________

Appeal 2010-007486
Application 10/480,360
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-5, 7-16, 18, and 19 in the Office Action
mailed July 15, 2009. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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§ 41.31(a) (2009).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a method of
manufacturing a lithium battery, and is representative of the claims on
appeal:
1. A method of manufacturing a lithium battery comprising a stack of
a negative electrode, a separator, and a positive electrode, which method
comprises applying negative electrode material on a negative current
collector so as to form the negative electrode, applying positive electrode
material on a positive current collector so as to form the positive electrode
and arranging a separator between the negative electrode and the positive
electrode, and which method further comprises:
a) producing a pattern of holes in the negative electrode;
b) producing a pattern of holes in the positive electrode;
c) applying a polymeric material on at least one side of the stack; and
d) subjecting the polymeric material to heat and pressure, so that the
polymeric material penetrates the holes, whereby the negative electrode, the
positive electrode and the separator are stuck and pressed together, wherein
the polymeric material comprises a polyethylene having a melt flow index of
at least 0.5 g/10 min. at 190ºC determined by testing in ASTM D 1238, and
wherein a diameter of at least one hole of said pattern or holes in the
negative electrode is different from a diameter of at least one hole of said
pattern of holes in the positive electrode.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-5, 7-16, 18, and 19
over Hikmet (WO 00/04601 A1) in view of Nielsen (US 5,540,992). Br, 11;
Ans. 3.
Appellants argue the ground of rejection based on independent claims
1, 8, 14, and 18 as a group. Br. 12. Thus, we decide this appeal based on
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
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Opinion
The plain language of representative claim 1 specifies a method of
manufacturing a lithium battery comprising the stated steps, wherein the last
clause, as illustrated by Specification Figure 1, requires that “a diameter of at
least one hole [7] of said pattern of holes in the negative electrode [3] is
different from a diameter of at least one hole [8] of said pattern of holes in
the positive electrode [5].”
We cannot agree with Appellants’ position that the Examiner erred in
concluding that Hikmet’s method of manufacturing a lithium battery, as
illustrated by Hikmet Figure 1A, would have led one of ordinary skill in the
art to adjust the pattern of holes 8, 9, 10 in negative electrode 1, separator 7,
and positive electrode 4, respectively, to arrive at the claimed method of
manufacturing a lithium battery encompassed by claim 1, including the
limitation in the last clause thereof. Br. 12-17; Ans. 3 and 5-6. Spec. 4:26-
34; Hikmet, e.g., abstract, 10:30 to 11:2. Appellants do not dispute the
Examiner’s findings and conclusion that Hikmet otherwise describes a
method of manufacturing a lithium battery which, along with the
polyethylene polymeric material described by Nielsen, meets the other claim
limitations. Br. 17-18; Ans. 3-5.
We determine that the plain language of the subject claim limitation
reads on any difference in diameter, however small, between any one hole in
the pattern of holes in the negative electrode and any one hole in the pattern
of holes in the positive electrode. Indeed, claim 1 does not specify any
specific difference in the diameters of the holes in the electrodes. In this
respect, we find that the pattern of holes are disclosed in the Specification to
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be formed “by mechanical punching,” and “[t]he diameter of the holes in the
positive electrode preferable is about 1 mm, while the diameter of the holes
in he negative electrode preferably is about 0,8 [sic] mm.” Spec. 4:21-25.
“When the stack [of negative electrode, separator, and positive electrode
with polyethylene on each side] is subjected to heat and pressure, the
polyethylene will melt and will penetrate the holes in the electrodes and the
separator through and through, thereby bonding together the electrodes and
the separator.” Spec. 4:30-33. We find no basis in the language of claim 1
or in the Specification on which to read any particular embodiment disclosed
in the Specification as a limitation into claim 1. See, e.g., In re Zletz, 893
F.2d 319, 321-22 (Fed. Cir. 1989).
We find that Hikmet would have described to one of ordinary skill in
the art a method manufacturing a lithium battery which forms patterns of
“holes in the electrode material . . . having a diameter of, e.g., 1 mm” by
“techniques such as mechanical punching or laser cutting.” Hikmet 3:27-32
and 7:19-23; see also Hikmet, e.g., 7:3 to 8:24, 10:30 to 11:8, and Fig. 1A.
“The holes . . . are filled with polymeric material, which contacts the
separator,” and “[t]he dimensions of the holes and the pattern are chosen in
such a way that the active surface of the electrodes amounts preferably to at
least 90%, because the holes filled with polymeric material reduces the
capacity of the electrodes: in these filled holes the active electrode material
is absent.” Hikmet 3:33 to 4:3.
The Examiner concludes that one of ordinary skill in the art following
Hikmet would have adjusted the size of the holes in the respective electrodes
to, among other things, provide for an adequate amount of polyethylene
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binder to hold the battery together while maximizing the active electrode
material in the lithium battery. Ans. 5-6 and 7-9. Appellants submit that
this position is not supported by Hikmet because the reference does not
recognize any “problem [that] may be corrected using holes of different size
diameter in the positive and negative electrodes.” Br. 14. Appellants further
submit that Hikmet’s disclosure to choose “dimensions of holes and
patterns” “merely suggests choosing the dimensions of the holes and the
pattern, without any disclosure or suggestion to use different sized holes.”
Br. 15-16. Thus, Appellants argue there is no direction in Hikmet leading
one of ordinary skill in the art to the subject claim limitation in claim 1. Br.
16-17.
Contrary to Appellants’ position, we, like the Examiner, find that
Hikmet would have disclosed to one of ordinary skill in the art that the
selection of hole size is a result effective variable with respect to the amount
of polyethylene binder used and the active electrode material retained in the
completed battery. Thus, Hikmet would have led one of ordinary skill in the
art to arrive at a workable or optimum range of hole diameters for the hole
patterns in the respective electrodes and the separator. See, e.g., In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
Thus, on this record, we cannot agree with Appellants that the subject
claim limitation patentably distinguishes the claimed method of forming a
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lithium battery over the method described by Hikmet. We determine that the
difference in diameter of one hole in each of the negative and positive
electrodes is tantamount to claiming results that would have been reasonably
expected by following the teachings of Hikmet. This is because normal
operational variances that would be reasonably expected to produce holes of
different diameters by normal operator error, as both Appellants and Hikmet
form the holes by “mechanical punching.” Furthermore, the subject claim
limitation does not specify a size range for the respective holes in the
negative and positive electrodes. Even if it did, Appellants have not
adduced evidence of unexpected results related to the subject claim
limitation. See, e.g., In re Woodruff, 919 F.2d 1575, 1577-78 (CCPA 1990),
and cases cited therein (where the difference between the claimed invention
and the prior art is a range, applicant must show that the claimed range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Hikmet and Nielsen with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-5, 7-16, 18, and 19 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
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AFFIRMED

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