Ex Parte Han et al

Board of Patent Appeals and Interferences

Jul 12, 2012

11194058 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/194,058 07/28/2005 Won Chull Han 55342/S1170 7743
23363 7590 07/12/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
LAIOS, MARIA J
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
07/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WON CHULL HAN,
BYOUNG HYUN KANG, JOONG HEON KIM,
CHANG SIK KIM, SEUNG NOH LEE,
and JAE KEUN BANH
____________

Appeal 2011-007773
Application 11/194,058
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-3, 5-7, 9-20, 22-24, and 26-33. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a battery sheath comprising a polyethylene
terephthalate (PET) layer which comprises a plurality of rubber particles and
Appeal 2011-007773
Application 11/194,058

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"a solubilizer surrounding the rubber particles" (independent claim 1; see
also independent claim 17).
Representative claim 1 reads as follows:
1. A battery sheath comprising:

a base layer having a first surface and a second surface,

a first adhesive on the first surface of the base layer;

a cast polypropylene (“CPP”) layer on the first adhesive; and

a polyethylene terephthalate (“PET”) layer on the second surface of
the base layer, the PET layer comprising a plurality of rubber particles and a
solubilizer surrounding the rubber particles.

The following rejections are advanced in the Examiner's Answer.1
The Examiner rejects the independent claims (i.e., claims 1 and 17)
under 35 U.S.C. § 103(a) as unpatentable over Yamashita et al. (WO
2000/062354, pub. Oct. 19, 2000); US 7,285,334 B1 is used as the English
equivalent) in view of Honma et al. (WO 2004/060658, pub. Jul. 22, 2004);
US 2006/0110599 A1 is used as the English equivalent) and Cahill (US
2004/0241418 A1, pub. Dec. 2, 2004).
The Examiner correspondingly rejects the dependent claims over
these references alone or further in view of other prior art of record.

1 The provisional obviousness-type double patenting rejection set
forth in the Final Office Action (FOA 9) is not presented in the Answer. For
this reason, we regard the provisional rejection as not before us in this
appeal.
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Application 11/194,058

3
Appellants' arguments are directed to the independent claims only, of
which claim 1 is representative. Accordingly, the dependent claims on
appeal will stand or fall with their parent independent claims.
We sustain the Examiner's § 103 rejections for the reasons expressed
in the Answer. The following comments are added for emphasis.
Appellants do not dispute the Examiner's conclusion that it would
have been obvious to provide the PET layer of Yamashita with rubber
particles in order to enhance impact resistance as taught by Honma (see Ans.
5). Rather, the controversy in this appeal involves the Examiner's
conclusion that it would have been obvious to provide the so-modified layer
of Yamashita with a compatibilizing agent (i.e., solubilizer) in order to
obtain good adhesion between the PET and the rubber particles as taught by
Cahill (id.).
We find no convincing merit in Appellants' argument that Cahill is
nonanalogous art because it allegedly is not reasonably pertinent to the
particular problem with which Appellants were concerned (see, e.g., App.
Br. 6-9). The scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme
Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 . . .
(2007), directs us to construe the scope of analogous art broadly"). Here,
Cahill is directed toward the same problem Appellants were trying to solve,
namely, improving adherence between PET and rubber particles (see Spec.
paras. [0028] and [0030] in comparison with Cahill para. [0016]).
We also are unpersuaded by Appellants' argument that those with
ordinary skill in this art would not have modified Yamashita using Cahill
(see, e.g., App. Br. 9-10). The record supports the Examiner's determination
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Application 11/194,058

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that an artisan would have provided the modified layer of Yamashita with a
compatibilizer (i.e., solubilizer) in order to obtain good adhesion between
the PET and the rubber particles as taught by Cahill. Appellants fail to
reveal any error in this determination.
Finally, we cannot agree with Appellants' contention that "Cahill does
not teach or suggest that the 'compatibilizing agent' surrounds the rubber
particles" as required by the appealed claims (see, e.g., App. Br. 10). The
teachings of Cahill would have suggested surrounding the rubber particles
with compatibilizing agent in order to effectuate the desired function of
compatibilizing these particles with the PET. Stated differently, it would
have been obvious for an artisan to ensure compatibilization of the rubber
particles with the PET as taught by Cahill by surrounding the particles with
compatibilizing agent.
The decision of the Examiner 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).
AFFIRMED

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