Ex Parte Jo et al

Patent Trial and Appeal Board

Aug 18, 2016

12376516 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/376,516 08/19/2010
23906 7590 08/22/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Seong-Mu Jo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TK5275-US-PCT 7494
EXAMINER
CANTELMO, GREGG
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
08/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEONG-MU JO, DONG-YOUNG KIM, and
BYUNG-DOO CHIN1
Appeal2015-000472
Application 12/37 6,516
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-7, 9-12, 14--16, and 19-23 in the above-
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is the Korea Institute of
Science and Technology. Appeal Br. 1.
Appeal2015-000472
Application 12/37 6,516
BACKGROUND
Appellants' invention "relates to a heat-resistant separator having a
heat resisting ultrafine fibrous layer ... coupled to one or both surfaces of a
porous separator, thereby having a shutdown function, excellent thermal
endurance, less thermal contraction as well as having an excellent ionic
permeability and charge-discharge characteristics." Spec. 1: 5-11.
Independent claim 1 is representative:
1. A heat-resistant separator comprising a fibrous layer, coated
on either one or both surfaces of a porous film, wherein the
porous film has a porosity of between 30 and 80% and wherein
the fibrous layer comprises a fibrous form which is formed from
a heat-resistant polymeric material having a melting point of
more than l 80°C or without a melting point and the fibrous
layer comprises fibers with diameters in the range 1 - 1000 nm
and wherein the porosity of the fibrous layer is not less than
that of the porous film.
Appeal Br. 7 (emphasis added). Claim 20 is also independent, and contains
a similar limitation to that emphasized in claim 1 above. See id. at 9.
The Examiner rejects claims 1-7, 9-12, 14--16, and 19-23 under
35 U.S.C. § 103(a) as being unpatentable over Int'l Publication No.
WO 2004/112183 Al [hereinafter Chun] (published Dec. 23, 2004), in view
of U.S. Patent Application Publication No. US 2006/0019154 Al
[hereinafter Imachi] (published Jan. 26, 2006). Final Action 3---6.
Appellants argue the claims as a group. See Appeal Br. 5---6.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to independent claim 1, and all claims stand
or fall together.
2
Appeal2015-000472
Application 12/37 6,516
DISCUSSION
The Examiner finds that Chun discloses a separator having the
structure of claim 1, except that "Chun does not teach of the fibrous film
comprising a heat-resistant polymeric material having a melting point of
more than 180°C or no melting point." Final Action 3--4. However, the
Examiner finds that Imachi teaches the missing limitation, and determines
that it would have been obvious to combine the teachings of Imachi with the
structure of Chun because the combination "would improve the heat
resistance, shrink resistance and cycle performance of the composite
structure." Id. at 4--5. In particular, the Examiner notes that in Imachi, "the
method of adhering the heat proof layer to the polyolefin layer is not
particularly limited (para. 25)," and thus it would have been obvious to
deposit the layer "via a polymer electrospinning deposition method as taught
by Chun to provide the synergistic effect of forming outer separator layers
having both the fibrous nature as taught by Chun (to improve the adhesion
properties and mechanical properties) and the heat-resistant characteristics
as taught by Imachi." Id. at 6.
Appellants argue that combining the teachings of Imachi with Chun
requires two steps, "substitut[ing] the material from the coating film of
Imachi into the fibrous layer of Chun" and "convert[ ing] the film of Imachi
into fibers," each of which represent "a significant modification of the
teachings of the cited art." Appeal Br. 5. According to Appellants, the
motivation for this combination "appears to come from the appellant's
disclosure rather than from the cited art." Id. Appellants argue that
converting the film of Imachi into fibers represents a fundamental structural
change, and has no basis in Imachi. See id. at 5---6; Reply Br. 2-3.
3
Appeal2015-000472
Application 12/37 6,516
Appellants also argue that using a heat-resistant fibrous layer would defeat
the primary objective of Chun, which is "to provide uniform absorption of
electrolyte on the membrane." Appeal Br. 6; Reply Br. 1-2. Furthermore,
Appellants argue that there is no evidence in the art of synergistic results
caused by the combined teachings of Chun and Imachi. See Reply Br. 2.
We do not find Appellants' arguments persuasive of reversible error
in the rejection. Obviousness does not require that the disclosure of Imachi
be bodily incorporated into the structure of Chun. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). The Examiner cites Imachi for the teaching that a
separator may include a layer made of a material that has either no melting
point or a melting point greater than 180°C, in order to provide heat
resistance. See Final Action 5. Incorporating this teaching into the structure
of Chun merely requires the selection of an appropriate heat-resistant
material for the fibrous layer as disclosed by Chun. We find no reversible
error in the Examiner's determination that this selection would have been
obvious to a person of ordinary skill in the art, particularly given that Chun
teaches that cellulose acetate is a suitable material for the fibrous layer. See
Chun 10:4--5. Appellants' Specification identifies cellulose acetate as a
material "without a melting point." Spec. 13: 16-17; see also Appeal Br. 7,
claim 2 ("The heat-resistant separator comprising a fibrous layer of claim 1,
wherein the heat-resistant polymeric material may comprise ... cellulose
acetate . . . . ").
In addition, contrary to Appellants' arguments, uniform electrolyte
absorption is not the only benefit that Chun attributes to the use of a
separator containing a fibrous layer. In addition, Chun states that a fibrous
layer has the result of "giving good mechanical strength and excellent
binding capacity to an electrode, and increasing a process rate for
4
Appeal2015-000472
Application 12/37 6,516
manufacturing the battery." Chun 5: 18-19. Appellants have not pointed to
any factual evidence that a person of ordinary skill in the art would have
considered the function of heat resistance as taught by Imachi to be
incompatible with, or a detriment to, any of the other functions that Chun
attributes to the fibrous layer.
Therefore, by a preponderance of the evidence presented to us on this
appeal record, we find no reversible error in the Examiner's decision to
reject independent claim 1under35 U.S.C. § 103(a). For the same reasons,
we find no reversible error in the Examiner's decision to reject claims 2-7,
9-12, 14--16, and 19-23.
DECISION
The Examiner's decision 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)(l )(iv).
AFFIRMED
5