11937599 (P.T.A.B. Nov. 21, 2014)

Ex Parte Imanaga et al

Patent Trial and Appeal BoardNov 21, 2014

11937599 (P.T.A.B. Nov. 21, 2014)

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. 11/937,599 11/09/2007 Shoji Imanaga 500.48139X00 2100 20457 7590 11/24/2014 ANTONELLI, TERRY, STOUT & KRAUS, LLP 1300 NORTH SEVENTEENTH STREET SUITE 550 ARLINGTON, VA 22209-3873 EXAMINER GATEWOOD, DANIEL S ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 11/24/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHOJI IMANAGA, KINYA AOTA, YOSHIHISA TSURUMI, and MASUHIRO ONISHI ____________ Appeal 2013-004557 Application 11/937,599 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner has finally rejected claims 1–16 of Application 11/937,599 under 35 U.S.C. § 103(a) as obvious. Final Rejection (FR) (March 13, 2012). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We heard argument in this appeal on November 4, 2014. For the reasons set forth below, we REVERSE. 1 Hitachi Vehicle Energy, Ltd. is identified as the real party in interest. (App. Br. 1.) Appeal 2013-00455 Application 11/937,599 2 BACKGROUND The ’599 Application describes a battery pack in which the positive terminal of a first cell is connected to the negative terminal of a second cell by a connecting plate. Spec. 1. Methods for welding the connecting plate to the terminals also are described. Id. In particular, the ’599 Application describes the use of a copper connecting plate that is arc spot welded to steel battery terminals. Id. at 6–7. The difficulty of forming strong welded joints between copper and steel or other iron-based alloys appears to be well known. E.g., ARC WELDING OF NONFERROUS METALS, 4th ed., 51–53 (Kobe Steel Co., 2011) (available at http://bit.ly/1ECbPQj).2 Although copper and iron are miscible in the liquid state, they have limited mutual solubility in the solid state. Id. at 52 (citing ARC WELDING OF NONFERROUS METALS AND SUPER ALLOYS, (Kobe Steel, Ltd., 1969)). Therefore, when copper is joined to steel in a welding process, the liquid metal in the weld solidifies as a two-phase (α-Cu and α-Fe) solid solution. Id. The iron deposits are brittle and subject to corrosion. Id. This results in a weld that has inferior corrosion and crack resistance. Id. These problems, however, can be overcome. A welder can successfully join copper to steel in at least two different ways: In certain situations, the only way to make a successful joint is to use a transition material between the two dissimilar metals. An example of this is the attempt to weld copper to steel. The two metals are not mutually soluble, but nickel is soluble with 2 ARC WELDING OF NONFERROUS METALS is not of record in the ’599 Application. We have consulted it for background information and to familiarize ourselves with the technology at issue. Appeal 2013-00455 Application 11/937,599 3 both of them. Therefore, by using nickel as an intermediary metal the joint can be made. Two methods are used: use a piece of nickel, or deposit several layers of nickel alloy on the steel, i.e., buttering or surfacing the steel with a nickel weld metal deposit. The nickel or nickel deposit can be welded to the copper alloy using a nickel filler metal. Such a joint will provide satisfactory properties and will be successful. WELDING OF DISSIMILAR METALS, http://bit.ly/1xt5xiz;3 see also ARC WELDING at 56 (describing buttering the sides of a copper-iron joint with nickel before welding). Claim 1 is representative of the ’599 Application’s claims and is reproduced below: 1. A battery pack comprising a plurality of battery cells and a connecting metallic plate connecting an electrode of one of the battery cells to an electrode of another one of the battery cells, wherein the connecting metallic plate is disposed on a positive electrode of the one of the battery cells and a negative electrode of said another one of the battery cells, and the connecting metallic plate and each of the positive and negative electrodes are fixed to each other to form a lap weld joint by an arc spot welding, wherein the connecting metallic plate is comprised of copper, and each of the positive and negative electrodes is comprised of one of high carbon steel and low carbon steel, and is plated with nickel so that the connecting metallic plate and 3 This page is not of record in this case, and we have consulted it for the sole purpose of familiarizing ourselves with the technology at issue. Although the page states that it was published in August 2006, we express no opinion regarding its status as prior art to the ’599 Application. Appeal 2013-00455 Application 11/937,599 4 each of the positive and negative electrodes are fixed to each other by the arc spot welding through the nickel. (App. Br. 17 (Claims App’x).) REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1–5, 7, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kawamura,4 Tsuchida ’965,5 and Omura.6 FR 3. 2. Claims 6, 9, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kawamura, Tsuchida ’965, Omura, and Imanaga.7 FR 6. 3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kawamura, Tsuchida ’965, Omura, and Tanjou.8 FR 9. 4 US Patent No. 5,578,392, issued November 26, 1996. 5 JP 57-182965, published November 11, 1982. We rely upon and cite to the English-language translation of the abstract that is of record in this application. 6 JP 2002-155394, published May 31, 2002. We rely upon and cite to the English-language machine translation that is of record in this application. 7 JP 2004-259584, published September 16, 2004. We rely upon and cite to the English-language translation of the abstract that is of record in this application. 8 US Patent Application Publication 2003/0215702 A1, published November 20, 2003. Appeal 2013-00455 Application 11/937,599 5 4. Claims 10 and 12–14 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsuchida ’965, Tsuchida ’569, and Omura. FR 9. 5. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsuchida ’965, Tsuchida ’569, Omura, and Kawamura. FR 12. DISCUSSION Each of the ’599 Application’s independent claims recites that “each of the positive and negative electrodes is comprised of one of high carbon steel and low carbon steel, and is plated with nickel.” (See App. Br. 17, 19– 21 (claims 1, 9, 10, and 12).) The Examiner found that this limitation was suggested by a combination of Kawamura and Omura. FR 3–4. In particular, the Examiner found that Kawamura teaches where at least one of the positive and negative electrodes and [sic, is] plated with Nickel (Column 1, elements [sic, lines] 34-35). However, Kawamura does not teach wherein at least one of the positive and negative electrodes has a main component of one of high carbon steel and low carbon steel or that the nickel thickness is not less than 1 µm and not more than 10 µm. Id. The Examiner further found that Omura describes the use of nickel- plated low carbon steel as a battery case. Id. at 4 (citing Omura Abstract, ¶¶ 11–13). Based upon these findings, the Examiner concluded that, at the time of the invention, it would have been obvious to a person of ordinary skill in Appeal 2013-00455 Application 11/937,599 6 the art to use Omura’s nickel-plated low carbon steel as the nickel-plated electrode described in Kawamura. Id. The Examiner’s reasoning, however, relies upon an erroneous factual determination. Kawamura does not describe the use of nickel-plated electrodes. The portion of Kawamura cited by the Examiner describes the use of a nickel plate to connect electrodes of two adjacent cells in a battery pack. Kawamura, col. 1, ll. 30–41. It does not describe the material used as the electrodes in any way. Id. In light of this error, the Examiner has not provided sufficient reasoning supported by adequate facts to explain why a person of ordinary skill in the art would have used Omura’s nickel-plated steel as the material for the electrodes described in Kawamura. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). The Examiner’s reasons for rejecting the ’599 Application’s independent claims rely upon an erroneous factual determination. We, therefore, are constrained to reverse. CONCLUSION For the foregoing reasons, we reverse the rejections of the pending claims in the ’599 Application. REVERSED kmm