Ex Parte Han et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10653468 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte WON-CHULL HAN
and TAKAKI MORRI
______________

Appeal 2009-007192
Application 10/653,468
Technology Center 1700
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
MARK NAGUMO, 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 1-8, 17, and 18 in the Office Action mailed
April 12, 2007. 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.
Appeal 2009-007192
Application 10/653,468
2
§ 41.31(a) (2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a button type battery, and
is representative of the claims on appeal:
1. A button type battery comprising:
a positive electrode active material pellet;
a negative electrode active material pellet;
a separator insulating the positive electrode material pellet and the
negative electrode active material pellet from each other;
a first collector body arranged to contact the positive active material
pellet;
a second collector body arranged to contact the negative active
material pellet;
a two part film exterior member enclosing the positive and negative
electrode pellets, the separator, and the first and second collector bodies;
a positive electrode lead connected to the first collector body
contacting the positive electrode active material pellet and extending outside
the film exterior member; and
a negative electrode lead connected to the second collector body
contacting the negative active material pellet and extending outside the film
exterior member, wherein the positive and negative electrode leads each
extend outside the two part film exterior member via spaces defined between
the two parts thereof.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1, 7, 8, 17, and 18
over Steffens ‘043 (US 3,483,043) in view of Hammel (US 4,123,598); and
claims 2-6 over Steffens ‘043 and Hammel in view of each of Takefumi (JP
10-21461 A), Heller (US 5,549,985) and Steffens ‘286 (US 3,476,286).
App. Br. 4; Ans. 3 and 4.
Appeal 2009-007192
Application 10/653,468
3
Appellants argue the first ground of rejection based on claims 1, 7,
and 17, and rely on these arguments with respect to the second ground of
rejection. App. Br. 4, 7, 8, and 13. Thus, we decide this appeal based on
claims 1, 7, and 17 with respect to the first ground of rejection. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Opinion
I
We determine that the plain language of claim 1, as illustrated by
Specification Figure 2, encompasses any button type battery comprising at
least any positive and negative electrode active material pellets 14, 16,
insulated from each other by separator 15, which electrodes have respective
collectors 13, 17 that are respectively connected to positive and negative
electrode leads 19, 18, wherein these components are enclosed in any two
part film exterior member 11, 12, and positive and negative electrode leads
19, 18 extend outside two part film exterior member 11, 12 via spaces
defined between the two parts 11, 12. Claim 7, dependent on claim 1, and
independent claim 17 specify that positive and negative electrode active
material pellets 14, 16 are formed by press processing the active metal.
II
The Examiner finds that Steffens ‘043 would have disclosed to one of
ordinary skill in the art a casing for a button battery which is formed of two
parts 11, 12, and covers the button battery electrode assembly comprising
collector body 13a, positive electrode E', separator S, negative electrode E,
and collector body 14a. Ans. 3, citing Steffens col. 2, l. 20 to col. 3, l. 73,
and Figs. 1 and 2. The Examiner further finds that positive and negative
Appeal 2009-007192
Application 10/653,468
4
leads 13, 14 from collectors 13a, 14a of positive and negative electrodes E',
E, respectively extend through openings 11b, 12b of respective casing parts
11, 12. Id. The Examiner finds that while the button battery casing of
Steffens ‘043 does not have positive and negative leads 13, 14 extending
outside the casing through spaces between casing parts 11, 12 as claimed,
Hammel would have disclosed to one of ordinary skill in this art a battery
container in which positive and negative leads 54, 56 extend outside the
container through spaces between trays 12, 14. Ans. 3-4, citing Hammel
Figs. 1 and 4. The Examiner thus concludes that one of ordinary skill in this
art would have substituted Hammel’s battery container for the casing of
Steffens ‘043 in the reasonable expectation of enclosing a button battery.
Ans. 4 and 7.
III
Appellants submit that the Examiner erred in combining Steffens ‘034
and Hammel because the references do not teach all of the limitations of
claims 1, 7 and 17. App. Br. 5 and 7-9. Appellants contend that Steffens
‘034 does not teach that positive and negative electrodes E', E are in the
form of pellets formed by press processing as Steffens ‘034 does not
describe the physical form and constitution of the electrodes. App. Br. 5 and
7-9. We disagree.
We find that one of ordinary skill in this art would have been armed
with the knowledge in the art that in a button battery, an electrode can be in
the form of an active material pellet as Appellants acknowledge. Spec.
¶ 0003. We notice that in the chemical arts, pellets are routinely formed
from materials by press processing. See, e.g., In re Ahlert, 424 F.2d 1088,
Appeal 2009-007192
Application 10/653,468
5
1091-92 (CCPA 1970)(the USPTO “may take notice of facts beyond the
record which, while not generally notorious, are capable of such instant and
unquestionable demonstration as to defy dispute”). Thus, as the Examiner
points out and contrary to Appellants’ contentions, one of ordinary skill in
the art would have recognized from Steffens Figure 1 that electrodes E', E
are in the form of pellets. Ans. 5. We are of the opinion that this person
would have further recognized that such pellets can be formed by press
processing as claimed.
Appellants further contend that Steffens ‘043 and Hammel do not
describe a two part film exterior enclosure as claimed in claims 1, 7 and 17.
App. Br. 5-6 and 7-9. Appellants point out that Steffens ‘034 describes cup-
shaped casing parts 11, 12 as connected by internal and external mating
threads on the casing parts or by a bayonet lock. App. Br. 5, citing Steffens
‘034 col. 2, ll. 61-67, and col. 3, ll. 17-27, and Figs. 1 and 4. Appellants
further point out that Hammel teaches that container trays 12, 14 are formed
from molded plastic. App. Br. 5-6. We disagree.
We determine that claims 1 and 17 do not define the term “two part
film exterior member.” We find that the Specification also does not define
this term. We further find that in the Specification, the term “two part film
exterior member” encompasses “an aluminum pouch film” as well as
embodiments formed from “an aluminum material having a thickness of
approximately 30 µm” and “manufactured flat plate type aluminum,” that
can be “welded” or attached by “an ultrasonic wave welding method.” Spec.
¶¶ 0002, 0013, 0030, 0035, 0040, 0046, 0048. Thus, on this record, we
interpret the term “two part film exterior member” in light of the language of
Appeal 2009-007192
Application 10/653,468
6
the claims and the disclosure in the Specification to encompass two layers of
suitable material of suitable thickness that can be secured together to form a
container that is capable of enclosing the positive and negative electrode
active pellets, the separator, and positive and negative collector bodies, and
the positive and negative electrode leads in functional arrangement, and that
permits the positive and negative electrode leads to extend outside via
species between the layers. Indeed, we find no basis in the language of
claims 1, 7, and 17 or in the Specification on which to read any particular
embodiment disclosed in the Specification as a limitation into these claims.
See, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
We find that Steffens ‘043 would have disclosed to one of ordinary
skill in this art that cup-shaped casing portions 11, 12, for enclosing the
elements of a button battery assembly, can be formed from insulating
materials, such as plastic material, which can be coated with a layer of metal.
Steffens ‘043, e.g., abstract, col. 2, ll. 29-31, and col. 3, ll. 4-5 and 52-53.
Steffens ‘043 further would have disclosed that cup-shaped casing portions
11, 12 can be held together by matting threads 11a and 12a or bayonet lock
53. Steffens ‘043 col. 2, ll. 61-67, col. 3, ll. 17-20 and Figs.
1 and 4. Steffens ‘043 also discloses that “a pair of cups which are simply
telescoped into each other and are permanently connected by adhesive or by
welding.” Steffens ‘043 col. 3, ll. 28-34.
We find Hammel would have disclosed to one of ordinary skill in the
art a battery container formed from co-fitting trays 12, 14 that encloses a
battery assembly, wherein the trays are preferably formed of molded plastic
and “may be connected together in desired fashion, such as by hinging, heat
Appeal 2009-007192
Application 10/653,468
7
sealing,” securing with tape, and having bosses and detents for a snap fit.
Hammel, e.g., col. 3, ll. 34-46. “Sheet metal could also be used with
electrical isolation.” Hammel col. 3, ll. 46-47.
On this record, we determine that, contrary to Appellants’ contentions,
one of ordinary skill in this art would have found in Steffens ‘043 and
Hammel similar teachings establishing that the respective two part button
battery casing and battery container can be formed of similar materials,
including metals, and the two parts can be attached together in similar
manner, including welding and heat sealing. Indeed, this person would have
further found in Steffens ‘043 and Hammel the teachings that the two part
button battery casing and the battery container are made of material of
suitable thickness such that two such layers can be secured together to form
a container that is capable of enclosing the a button battery assembly and a
battery in functional arrangement. Thus, this person would have selected a
suitable thickness of a molded plastic, metal lined plastic, or metal to form
the two parts of a casing and a container, which would satisfy the claim
element “film exterior member” of claims 1, 7, and 17.
Appellants further contend that Steffens ‘043 does not teach positive
and negative electrode leads connected to collector plates that extend outside
of an exterior film member as claimed in claim 1. App. Br. According to
Appellants, Steffens ‘043 does not teach leads attached to collectors and
extending outside the exterior member of the battery casing. App. Br. 6.
Appellant also contends that Hammel describes terminal connectors 54, 56
as formed from conductive strips that terminate in respective button
Appeal 2009-007192
Application 10/653,468
8
terminals 50, 52, wherein the terminal connectors 54, 56 are connected to
different batteries. App. Br. 6. We disagree.
We find that Steffens ‘043 would have disclosed to one of ordinary
skill in the art that positive and negative electrode leads 13, 14 are
respectively connected to disk shaped metallic elements 13a, 14a which this
person would find are collector bodies for the respective positive and
negative electrodes E', E, wherein the positive and negative electrode leads
13, 14 extend through openings 11b, 12, in casing portions 11, 12 and thus
outside of the casing. Steffens ‘043 col. 2, ll. 34-38 and 70-72, and Fig. 1.
We find Hammel would have disclosed to one of ordinary skill in this art
that positive and negative terminal connectors 54, 56 lead to positive and
negative button terminals 50, 52 for connection to an external circuit load,
wherein “the generally T-shaped conductor terminals 54, 56 may be received
in the notches [at ends of trays 12, 14], and the trays then assembled
together.” Hammel col. 3, ll. 5-22 and Figs, 1 and 4; see also Hammel col.
1, ll. 40-42. Thus, this person would have recognized that in Hammel,
terminal connectors 54, 56 extend outside the two trays 12, 14 forming the
container through spaces defined between the two trays 12, 14 as claimed.
On this record, we determine that, contrary to Appellants’ contentions,
one of ordinary skill in the art would have recognized from both Steffens
‘043 and Hammel that positive and negative electrode leads extend from the
battery assembly, including collector bodies, inside the battery casing and
container to outside of the battery casing and container.
Accordingly, we are of the opinion that Appellants have not
established that the Examiner erred in combining Steffens ‘034 and Hammel
Appeal 2009-007192
Application 10/653,468
9
because the references do not teach all of the limitations of claims 1, 7 and
17.
IV
Appellants submit that the Examiner erred in combining Steffens ‘034
and Hammel because there is no motivation to combine the references in a
manner leading to the invention encompassed by claims 1, 7, and 17. App.
Br. 9-13. We disagree.
Contrary to Appellants’ contentions, the Examiner’s position is not
one of reconfiguring the button battery casing of Steffens ‘043 in view of
Hammel’s battery casing, but that one of ordinary skill in this art would have
substituted Hammel’s battery container for the button battery casing of
Steffens ‘043 to house the button battery assembly taught by Steffens ‘043.
App. Br. 9-10; Ans. 4-7.
We further cannot subscribe to Appellants’ position that the use of
Hammel’s battery container would change the principle of operation of a
button battery casing as taught by Steffens ‘034. App. Br. 10-11. We find
that, as the Examiner points out, Steffens ‘043 would have taught that the
button battery casing holds the elements of button battery assembly in
functioning position, including electrode leads 13, 14. Steffens ‘043, e.g.,
col. 2, ll. 8-9, and col. 3, ll. 8-13, and col. 4, ll. 19-25. We further find that
one of ordinary skill in the art would have reasonably inferred from
Hammel’s teachings that trays 12, 14 are configured to fit any battery
assembly so as to hold the battery assembly in functional position, including
Appeal 2009-007192
Application 10/653,468
10
electrode leads 54, 56.2 Hammel, e.g., col. 1, ll. 22-28, Thus, as the
Examiner contends, Hammel’s battery container would provide the pressure
to hold together in functional arrangement the button battery assembly
taught by Steffens ‘043 in the same manner as the button battery casing of
Steffens ‘043.
On the same basis, we disagree with Appellants’ position that
Hammel’s battery assembly is different than the button battery assembly of
Steffens ‘043, particularly pointing out that Hammel’s leads 54, 56 are
positioned differently than leads 13, 14 of Steffens ‘043. App. Br. 11-13.
We agree with the Examiner that one of ordinary skill in the art would have
recognized from the references that leads 13, 14 of Steffens would extend
beyond Hammel’s container of trays 12, 14 through spaces defined between
trays 12, 14 as claimed. Ans. 8-9
Accordingly, we are of the opinion that Appellants have not
established that the Examiner erred in combining Steffens ‘034 and Hammel
because there is no motivation to combine the references in a manner leading
to the invention encompassed by claims 1, 7, and 17. Indeed, on this record,
one of ordinary skill in this art would have been motivated by Steffens ‘043
and Hammel to substitute Hammel’s battery case for the button battery case
of Steffens ‘043 which would fit the button battery

2 It is well settled that that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw from the teachings, see In re Fritch, 972
F.2d 1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826-27
(CCPA 1968), presuming skill on the part of this person. In re Sovish, 769
F.2d 738, 742-43 (Fed. Cir. 1985).
Appeal 2009-007192
Application 10/653,468
11
assembly taught by Steffens ‘043 in the reasonable expectation of having a
button battery in a suitable casing. See, e.g., KSR Int'l. Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (a patent claiming a combination of elements
known in the prior art is obvious if the improvement is no more than the
predictable use of the prior art elements according to their established
functions); Sovish, 769 F.2d at 742-43; In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is . . . what the combined teachings
of the references would have suggested to those of ordinary skill in the
art.”); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express
suggestion to interchange methods which achieve the same or similar results
is not necessary to establish obviousness); see also, e.g., Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) ("the expectation of
success need only be reasonable, not absolute"); In re O’Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.” (citations omitted)).
V
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 Steffens ‘043 and Hammel alone and as further
combined with Takefumi, Heller, and Steffens ‘286 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 1-8, 17, and 18 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
Appeal 2009-007192
Application 10/653,468
12
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)(v).

AFFIRMED

kmm

KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614