Ex Parte Goto et al

Board of Patent Appeals and Interferences

Jan 21, 2009

10188519 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHUSAKU GOTO, KAORU INOUE, YUI NIWA, and TOYOJI
SUGIMOTO
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Appeal 2007-0693
Application 10/188,519
Technology Center 1700
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Decided: January 21, 2009
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Before CAROL A. SPIEGEL, ROMULO H. DELMENDO, and
MICHAEL P. TIERNEY, Administrative Patent Judges.1

DELMENDO, Administrative Patent Judge.

1 Administrative Patent Judge Teddy S. Gron participated in our May 24,
2007 Decision but has since retired from Federal service. Accordingly,
Administrative Patent Judge Spiegel has replaced him on this panel. Cf. In
re Bose Corp., 772 F.2d 866, 869 (Fed. Cir. 1985).
Application 10/188,519
DECISION ON REQUEST FOR REHEARING
Appellants timely filed a Request for Rehearing (“REQUEST FOR
REHEARING UNDER 37 CFR 1.197(b)” filed July 30, 2007, hereinafter
“Request”) of a Decision on Appeal mailed May 24, 2007 (hereinafter
“Decision”), which affirmed the Examiner’s rejection under 35 U.S.C.
§ 103(a) of claims 1-20 as unpatentable over United States Patent 5,656,393
issued to Boer on August 12, 1997, reversed the rejections under 35 U.S.C.
§ 112, first and second paragraphs, of claims 5, 10, 15, and 20, and
dismissed the rejection under 35 U.S.C. § 102(b) of claims 1-4 and 11 as
anticipated by Boer. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants assert that the Decision contains two errors (Request 1).
First, Appellants contend that the Decision incorrectly concluded that
Appellants did not dispute the Examiner’s reading of Boer (Request 2;
Decision 8, ll. 9-13, Fact 112). According to Appellants, they “have
consistently strongly disputed the Examiner’s finding that Boer discloses or
suggests copolymers in which the negative electrode material comprises an
interpolymer binder of a mixture of ethylene, propylene, and a third
monomer” (Request 2-3; underlining original). Second, Appellants urge that
the Decision “misapplied the law concerning obviousness of ranges” by
relying on Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir.
1999) and then concluding that a lower limit that lies outside the range
disclosed by the prior art is not a basis upon which the claim can be found
patentable over the prior art (Request 1 and 4-6; Decision 17, ll. 13-21 and

2 Fact 11 reads (Decision 8): “Appellants do not dispute the examiner’s
factual finding that Boer teaches a negative electrode material comprising a
mixture of (1) a graphite capable of absorbing and desorbing lithium and (2)
a ethylene propylene interpolymer binder. (Examiner’s Answer at 3-5; Br.
11-15.)”
Appeal 2007-0693
Application 10/188,519

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19, ll. 11-12). According to Appellants, Atlas Powder is inapt because “[i]t
deals with anticipation, not obviousness” (Request 4; underlining original).
Furthermore, Appellants contend that the proposition stated in Atlas Powder
“applies to a situation in which there is an actual working example in the
reference that falls within the scope of the claims[,]” unlike the disclosure of
Boer (Request 5).
Because Appellants failed to show that the Decision misapprehended
or overlooked any point in contention in the appeal, we DENY Appellants’
Request. See 37 C.F.R. § 41.52(a)(1). Our reasons follow.

1. The Board Did Not Ignore Appellants’ Argument That Boer Does
Not Disclose or Suggest a Copolymer Containing a Mixture of Hydrocarbon
Monomers and Another Monomer Such As Acrylic Acid, Alkacrylic Acid, or
an Ester Thereof
Relying on Boer’s disclosure at column 5, lines 6-19, the Examiner
found that the reference discloses a polymer binder which “may be a
polyolefin selected from homopolymers and copolymers” (italicizing
original), and that “[t]he polymer component may be a mixture of at least 80
percent . . . of monomers such as ethylene, propylene, butene and the like. .
.” (Examiner’s Answer mailed September 1, 2006 at 3). Indeed, Boer
unequivocally teaches “copolymers formed from a mixture of hydrocarbon
olefin group (–HC=CH–) containing monomers, such as ethylene,
propylene, butene and the like” (col. 5, ll. 12-14). These facts, together with
the contents of the Appeal Brief, formed the basis of the finding as set forth
in Fact 11 of the original Decision.
Appeal 2007-0693
Application 10/188,519

4
In their Request, Appellants point out that they have consistently
argued that Boer does not disclose or suggest “copolymers in which the
negative electrode material comprises an interpolymer binder of a mixture of
ethylene, propylene, and a third monomer” (Request 2-3).
The original Decision, however, acknowledged Appellants’ argument.
Specifically, the Decision stated (Decision 15, ll. 23-28):
[I]t is Appellants’ position that Boer does not disclose the
“general conditions” of the claimed subject matter because it
“would dissuade the person of ordinary skill in the art from
investigating a copolymer (i.e. a terpolymer) in which ethylene,
propylene, and a third monomer, such as acrylic acid, alkacrylic
acid, or an ester thereof, were all present” in the specified
ethylene-propylene amount . . . .
The Decision then addressed why the argument was unpersuasive (Decision
16-17). Here, Appellants do not explain what fact was misapprehended or
overlooked that shows error in the analysis or reasoning.

2. The Original Decision Did Not Misapply the Law Concerning
Obviousness of Ranges
The original Decision cited Atlas Powder for the proposition that
when a claim recites a range, any prior art reference within the range is
sufficient for purposes of showing unpatentability of that claim (Decision
17, ll. 10-21). Appellants challenge this by arguing that Atlas Powder “deals
with anticipation, not obviousness” (Request 4; underlining original).
This argument is unavailing because it conveniently ignores other
binding precedent. The original Decision also cited In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003), which states: “In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
Appeal 2007-0693
Application 10/188,519

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slight overlap in range establishes a prima facie case of obviousness.” Thus,
it is well settled that a prior art reference does not have to teach the entire
claimed range in order to render the claim unpatentable.
Appellants appear to be arguing that Boer’s disclosure of at least 80%
by weight for the mixture of hydrocarbon olefin-group containing monomers
(col. 5, ll. 14-16) is ineffective because Boer does not include a working
example (Request 5). This argument is without any merit, because “it is
well established that a disclosure of a reference is not limited to specific
working examples contained therein.” In re Fracalossi, 681 F.2d 792, 794
n.1 (C.C.P.A. 1982).
Finally, we reaffirm the view in the original Decision that a showing
of criticality of the 70% lower limit for the ethylene-propylene weight
content is not particularly helpful to show nonobviousness in view of Boer’s
disclosure of 80% by weight of hydrocarbon monomers.

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
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).
REHEARING DENIED
Appeal 2007-0693
Application 10/188,519

6

MAT

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