Ex Parte Kawada et al

Patent Trial and Appeal Board

Oct 16, 2018

13356392 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/356,392
23640 7590
Baker Botts L.L.P.
FILING DATE FIRST NAMED INVENTOR
01/23/2012 Y oshitaka Kawada
10/18/2018
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.
081588.0102 5115
EXAMINER
910 Louisiana Street, One Shell Plaza w ANG, EUGENIA
HOUSTON, TX 77002
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
susan.stewart@bakerbotts.com
debie.hernandez@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITAKA KA WADA, TETSUO SAKAI,
NATSUKI TOYOTA, NAOTADA OKADA,
and SUSUMU Y AHAGI
Appeal2017-009726
Application 13/356,392
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and JANEE. INGLESE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5, 11, and 12. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a secondary battery. Claim 1 is illustrative:
1. A secondary battery comprising:
a container, having a pouring hole through which an
electrolyte is poured, for housing the electrolyte poured through
the pouring hole, and an electrode body, and
a sealing lid for closing the pouring hole,
Appeal2017-009726
Application 13/356,392
Kay
Yim
wherein the sealing lid is fixed to the container by a
ring-shaped welding portion having a depth formed in the
container and the sealing lid using a first laser welding, the
sealing lid having a first ring-shaped molten portion that
partially overlaps with a first side of the ring-shaped welding
portion, the first ring-shaped molten portion having a depth that
is less than the depth of the welding portion and corresponding
to approximately a depth of the sealing lid and formed using a
second laser welding so as to reduce micro cracks formed on
the first side of the ring-shaped welding portion created during
formation of the ring-shaped welding portion.
The References
US 2005/0139640 Al
US 2006/0024573 Al
The Rejections
June 30, 2005
Feb.2,2006
The claims stand rejected as follows: claims 1-5, 11, and 12 under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention, claims 11 and 12 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement, and claims 1-5, 11,
and 12 under 35 U.S.C. § I03(a) over Yim in view of Kay.
OPINION
We affirm the rejection under 35 U.S.C. § 112, second paragraph as to
claims 1, 2, 5, 11, and 12 and reverse it as to claims 3 and 4, and reverse the
rejections under 35 U.S.C. § 112, first paragraph and 35 U.S.C. § 103.
Rejection under 35 USC§ 112, second paragraph
A claim complies with 35 U.S.C. § 112, second paragraph, if the
claim language is as precise as the subject matter permits and if, when read
in light of the specification, the claim reasonably apprises those skilled in the
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Application 13/356,392
art both of the utilization and scope of the invention. See Shatterproof Glass
v. Libby-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985). "[T]he
inventor may be his own lexicographer, and may use common words in
uncommon ways, provided only that the intended meaning is clear." In re
Dance, 160 F.3d 1339, 1344-45 (Fed. Cir. 1998).
The Examiner concludes that "approximately" in claims 1 and 2 is
indefinite (Ans. 3).
"'[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification."' In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants' Specification
indicates that "the first ring-shaped molten portion having a depth ...
corresponding to approximately a depth of the sealing lid" in claims 1 and 2
means that the depth of the ring-shaped molten portion is "the thickness of
the sealing lid 8 ±20%" (Spec. 14: 18- 15: 1). Claims 3 and 4, however,
which depend respectively from claims 1 and 2 and, therefore, further limit
those claims, see 35 U.S.C. § 112, fourth paragraph, recite that the depth of
the ring-shaped molten portion "is in a range of ±20% of a thickness of the
sealing lid." Thus, claims 3 and 4 appear to have the same scope as,
respectively, claims 1 and 2.
The Appellants argue, based upon their Specification's statement that
"the melting depth may be corresponding to the thickness of the sealing
lid 8, for example, in a range of the thickness of the sealing lid 8 ± 20% of
the thickness" (Spec. 14:23-25), that "the term 'approximately' as
mentioned in Claim 1 in the phrase, 'molten portion having a depth ...
corresponding to approximately a depth of the sealing lid' could only
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Application 13/356,392
reasonably refer to the range provided in the specification, i.e., ±20% of the
thickness of the sealing lid" (Reply Br. 3) and "[t]he term 'approximately' is
included in the claim as to signify that the depth of the molten portion may
be either the thickness of the sealing lid or within a range of ±20% of said
thickness" (id.). When the Appellants address claims 3 and 4, however, they
argue that "the term 'approximately' as stated in Claims 1 and 2 is simply
used to indicate that the depth of the molten portion need not be exactly the
thickness of the sealing lid and, when keeping the language of the
specification in mind, could be in a range of ±20% of said thickness" (id.).
The Appellants' arguments that "the first ring-shaped molten portion having
a depth ... corresponding to approximately a depth of the sealing lid" in
claims 1 and 2 means that the depth of the first ring-shaped molten portion
both is within ±20% of the thickness of the sealing lid and could be within
that range render the intended meaning of "approximately" unclear.
We therefore affirm the rejection under 35 U.S.C. § 112, second
paragraph, of claims 1 and 2 and their dependent claims 5, 11, and 12.
Because dependent claims 3 and 4 clearly recite that the thickness of the
ring-shaped molten portion is within ±20% of the thickness of the sealing
lid, we reverse the rejection under 35 U.S.C. § 112, second paragraph, of
those claims.
Rejection under 35 USC§ 112,first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
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Application 13/356,392
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991 )).
The Examiner finds that the Appellants' Specification describes
power output of the laser beams used for the second and third laser weldings
and describes output generally, but not power output specifically, of the laser
beam used for the first laser welding and, therefore, does not provide written
descriptive support for the power outputs of the laser beams used for the
second and third laser weldings being lower than the power output of the
laser beam used for the first laser welding (Ans. 3, 18, 19).
The Appellants' Specification states that the outputs of the laser
beams used for the second and third laser weldings are lower than the output
of the laser beam used for the first laser welding, and exemplifies an output
in kilowatts, which is a unit of power (Spec. 12:20-24; 15:12:21; Fig. 8).
Thus, the Specification shows possession of power outputs of the laser
beams used for the second and third laser weldings being lower than the
power output of the laser beam used for the first laser welding. Accordingly,
we reverse the rejection under the 35 U.S.C. § 112, first paragraph, written
description requirement.
Rejection under 35 US.C. § 103(a)
We need address only the sole independent claim, i.e., claim 1. That
claim requires a secondary battery sealing lid (8) having a first ring-shaped
molten portion (8f) which partially overlaps a first side of a ring-shaped
welding portion (8e ), has a depth less than that of the ring-shaped welding
portion, and corresponds to approximately a depth of the sealing lid (Fig. 7).
Yim discloses a secondary battery comprising a sealing plate (140)
sealed to a cap plate (13 l)'s electrolyte injection hole (136)'s periphery by a
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closed-loop laser welded portion (141) (i-f 64). The sealing plate (141) depth
and weld thickness are, respectively, 0.05---0.45 mm and 0.15---0.5 mm
(i-fi-f 65, 66; Fig. 2a).
Kay discloses a multi-pass friction stir weld joint (100) comprising a
first-pass stir weld joint (102) whose retreating side (102b) is at least
partially overlapped by the advancing side (104a) of a second weld pass
joint (104) whose retreating side (104b) optionally is at least partially
overlapped by the advancing side (106a) of a third weld pass joint (106), to
remix the first and second weld pass joints' retreating sides (102b, 104b)
(i-fi-f 8-10; Fig. 7).
The Examiner finds that Yim's laser welding and Kay's friction stir
welding produce the same product, i.e., a welded product, and substituting
Kay's friction stir welding for Yim's laser welding would have yielded the
predictable result of creating a welded product (Ans. 7-9).
The Examiner does not address the differences between Yim's laser
welding and Kay's friction stir welding and establish that regardless of those
differences, they produce the same product such that one of ordinary skill in
the art would have made Yim's laser weld a multi-pass weld. 1 Nor does the
Examiner provide evidentiary support for the assertion that weld depth
optimization would have resulted in the multi-pass weld having the
Appellants' claim 1 's relative depths of the overlapping first ring-shaped
molten portion and ring-shaped welding portion (Ans. 5-7, 21-22).
1 The Examiner's assertion that "Applicant has not shown any proof or
reasoning as to the fact that laser welding produces a structurally different
welded product than other types of welding" (Ans. 20) is not well taken
because "[t]he Patent Office has the initial duty of supplying the factual
basis for its rejection." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
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Thus, the record indicates that the Examiner's rejection is based upon
impermissible hindsight in view of the Appellants' disclosure. See Warner,
379 F.2d at 1017 ("A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art"). Accordingly, we reverse
the rejection under 35 U.S.C. § 103(a).
DECISION
The rejection of claims 1-5, 11, and 12 under 35 U.S.C. § 112, second
paragraph is affirmed as to claims 1, 2, 5, 11, and 12 and reversed as to
claims 3 and 4. The rejections of claims 11 and 12 under 35 U.S.C. § 112,
first paragraph, written description requirement, and claims 1-5, 11, and 12
under 35 U.S.C. § 103(a) over Yim in view of Kay are reversed.
The Examiner's decision is affirmed-in-part.
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-IN-PART
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