Ex Parte Imachi et al

Board of Patent Appeals and Interferences

Apr 22, 2010

11091368 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NAOKI IMACHI
and SEIJI YOSHIMURA
____________________

Appeal 2009-009914
Application 11/091,368
Technology Center 1700
____________________

Decided: April 22, 2010
____________________

Before MICHAEL P. COLAIANNI, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 17. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We REVERSE.

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Application 11/091,368

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STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a battery
separator.
The Examiner maintains the following rejections: (1) claims 1,
3-9, and 11-15 under 35 U.S.C. § 102(b) as anticipated by Tsukuda (US
2003/0180622 A1, published Sep. 25, 2003); (2) claims 2 and 10 under
35 U.S.C. § 103(a) as unpatentable over Tsukuda and Shi (US 7,087,343 B2,
issued Aug. 8, 2006); and (3) claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Tsukuda and Oura (US 6,713,217 B2, issued Mar. 30,
2004).
ISSUE
Did the Examiner reversibly err in finding that Tsukuda teaches a
battery separator consisting of a plurality of layers of microporous films as
required by claims 1 and 9? We decide this issue in the affirmative.
FINDINGS OF FACT
1. The Specification discloses at paragraph [0008] that it is conventional
to add a thermoplastic polymer to a fiber and/or pulp separator
substrate (e.g., a nonwoven fabric layer), however, these conventional
separators have "considerably large thicknesses." The Specification
also discloses that Appellants' separator made from solely
microporous films achieves, inter alia, thickness reduction of the
separator. (Spec. ¶¶ [0009] and [0050]).
2. The Specification discloses that Appellants' film has a high porosity,
which gives a good "electrolyte accommodating property." (Spec.
[0013].)
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3. Tsukuda teaches that its core-shell conjugate fiber separator's core
portion has fibers that are "entangled [with] each other . . . to give a
dense wet nonwoven fabric having small pores." (Tsukuda, ¶ [0038];
see also ¶¶[0053]-[0054]).

ANALYSIS AND CONCLUSION
We begin by noting that claims 1 and 9 require a "battery separator
consisting of . . . microporous films" and a "battery separator consists of . . .
microporous films," respectively. In other words, by virtue of employing the
terms "consisting of" and "consists of" in claims 1 and 9, respectively,
Appellants limit the components of the battery separator to be solely
microporous films.
Turning our attention to the rejection, the Examiner interprets a
microporous film's structure as being a structure that, inter alia, is capable of
being impregnated with an electrolyte. (Ans. 3). Specifically, while
Tsukuda does not explicitly mention a microporous film, the Examiner states
that Tsukuda teaches that
the battery separator consist[s] of a plurality of layers of
microporous films (paragraph 0057), at least one of the
microporous films being film made of a polyolefin-based
material (paragraph 0053), and at least one of the rest of the
microporous films being a film made of a material having a
melting point of 200 degrees Celsius or higher (paragraph
0053).

(Ans. 3). In addition, the Examiner states that
in paragraph 0069, Tsukuda discloses that the separator
comprises a pore diameter of 0.9 to 6um, in paragraph 0058 the
separator having a void rate of 65-85% and further discusses in
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paragraph 0070 the air permeability of the separator, therefore,
Tsukuda does disclose a separator with a microporous film.

(Ans. 7-8). In other words, given Tsukuda's embodiment relating to a
battery separator comprising core-shell conjugate fibers at paragraphs [0053]
and [0057] and Tsukuda's separator characteristics at paragraphs [0058],
[0069], and [0070], the Examiner determines that since Tsukuda's battery
separator, which includes a wet nonwoven fabric layer core portion, is
capable of being impregnated with an electrolyte, Tsukuda's wet nonwoven
fabric layer core portion is a microporous film and thus meets the
requirement in claims 1 and 9 that the battery separator consists of
microporous films. We disagree.
It is axiomatic that during examination, “claims . . . are to be given
their broadest reasonable interpretation consistent with the specification, and
. . . claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Specification plainly discloses (FF 1) that a nonwoven fabric
layer's structure is different from a microporous film's structure. In this
regard, Appellants rely on Tsukuda and other supporting evidence to
illustrate that the artisan would not view a nonwoven fabric to be a
microporous film (App. Br. 5-7). For example, Appellants correctly state
that
the terminology " microporous film" and "nonwoven fabric"
would be understood by a person of ordinary skill in the art to
identify distinct structures is the "BACKGROUND ART"
section of Tsukuda which describes microporous films and
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nonwoven fabrics as separate materials for separators. (See,
e.g., Col. 1, paragraph . . . [0004], which describes the use of
nonwoven fabric for overcoming the problem of a microporous
film described in paragraph [0002]).

(App. Br. 6).
Thus, it is not reasonable to interpret Tsukuda's nonwoven fabric layer
as being a microporous film. In this regard, while the Examiner directs us
to evidence that Tsukuda's wet nonwoven fabric layer core portion is
capable of being impregnated with an electrolyte, the Examiner directs us to
no credible evidence to support the position that a nonwoven fabric layer's
structure is the same as a microporous film's structure.
Indeed, as Appellants correctly state, "Tsukuda [itself] . . . describes
microporous films and nonwoven fabrics as separate materials . . . the core-
shell conjugate fibers described in . . . Tsukuda are by definition different
from a separator consisting of a plurality of layers of microporous films."
(App. Br. 6-7) (underlying in original; italics ours).
Thus, it follows that the Examiner reversibly erred in finding that
Tsukuda teaches a battery separator consisting of a plurality of layers of
microporous films as required by claims 1 and 9.
Because the Examiner relies on, inter alia, the findings relating to
claims 1 and 9 for the other rejections and does not provide any findings as
to how any of the additional applied prior art references would meet the
disputed claim feature, we reverse all of the rejections made by the
Examiner.

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ORDER
In summary, all of the rejections made by the Examiner are reversed.
REVERSED

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