Ex Parte Kim et al

Board of Patent Appeals and Interferences

Mar 20, 2012

11191018 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JONG KU KIM and HYOUNG SU KIM
____________

Appeal 2011-005916
Application 11/191,018
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and KAREN M. HASTINGS,
Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1, 2, 5, 8, 9, 11, 12, 14 through 16, 19, and 20.1 Claims
3, 4, 6, 7, 10, 13, 17, and 18, the other pending claims in the above-identified
application, stand withdrawn from consideration by the Examiner. An oral

1 See Appeal Brief (“App. Br.”) filed September 8, 2010, 3; Reply Brief
(“Reply Br.”) filed January 19, 2011, 2; and Examiner’s Answer (“Ans.”)
filed November 19, 2010, 2.
Appeal 2011-005916
Application 11/191,018

2
hearing was held on March 8, 2012. We have jurisdiction under 35 U.S.C.
§ 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “an electrode assembly
comprising an electrode tab or an electrode plate substrate that has an
identification mark formed thereon and a lithium rechargeable battery using
the same” (Spec. 1, para. 0001). The electrode tab or an electrode plate
substrate having such identification mark “makes it possible to easily verify
the manufacturing process of the battery including production equipment,
production date, operators, and production lines” (Spec. 4, para. 0014).
Details of the appealed subject matter are recited in representative claims 1
and 192 reproduced from the Claims Appendix to the Appeal Brief as shown
below:
1. An electrode assembly, comprising:

a positive electrode plate comprising a positive electrode collector,
positive electrode active materials that are applied to a part of the positive
electrode collector, a positive electrode uncoated portion of the positive
electrode collector that has no positive electrode active material applied to it,
and a positive electrode tab that is coupled with the positive electrode
uncoated portion;

a negative electrode plate comprising a negative electrode collector,
negative electrode active materials that are applied to a part of the negative
electrode collector, a negative electrode uncoated portion of the negative
electrode collector that has no negative electrode active material applied to

2 Appellants limit their arguments to claims 1 and 19. (See App. Br. 7-15
and Reply Br. 4-11.) Accordingly, we select claims 1 and 19 and decide the
propriety of the Examiner’s § 103(a) rejections set forth in the Answer based
on these claims alone consistent with 37 C.F.R. § 41.37(c)(iv).
Appeal 2011-005916
Application 11/191,018

3
it, and a negative electrode tab that is coupled with the negative electrode
uncoated portion; and

a separator that is interposed between the positive electrode plate and
negative electrode plate to insulate them from each other while being wound
together with them,

wherein an identification mark is disposed on at least one of the
positive electrode tab and the negative electrode tab.

19. A cylindrical battery, comprising:

a cylindrical electrode assembly comprising a positive electrode plate,
a negative electrode plate, and a separator that is interposed between the
positive electrode plate and negative electrode plate to insulate them from
each other while being wound together with them;

a cylindrical case; and

a cap assembly,

wherein the positive electrode plate comprises a positive electrode
collector, positive electrode active materials that are applied to a part of the
positive electrode collector, a positive electrode uncoated portion of the
positive electrode collector that has no positive electrode active material
applied to it, and a positive electrode tab that is coupled with the positive
electrode uncoated portion,

wherein the negative electrode plate comprises comprising a negative
electrode collector, negative electrode active materials that are applied to a
part of the negative electrode collector, a negative electrode uncoated
portion of the negative electrode collector that has no negative electrode
active material applied to it, and a negative electrode tab that is coupled with
the negative electrode uncoated portion,

wherein a first identification mark is disposed on at least one of the
positive electrode tab and the negative electrode tab.

Appeal 2011-005916
Application 11/191,018

4
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following prior art references at page 3 of the
Answer:
Mitzutani US 5,202,199 Apr. 13, 1993
Miyazaki US 6,051,338 Apr. 18, 2000
Enomoto US 2003/0035993 A1 Feb. 20, 2003
Furukawa JP 2004134197 A Apr. 30, 2004
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:
1) Claims 1, 2, 5, 9, 11, 12, and 14 through 16 under 35 U.S.C.
§103(a) as unpatentable over the combined disclosures of Miyazaki and
Furukawa;
2) Claims 8 and 11 under 35 U.S.C. §103(a) as unpatentable over
the combined disclosures of Miyazaki, Furukawa, and Enomoto;
3) Claim 19 under 35 U.S.C. §103(a) as unpatentable over the
combined disclosures of Enomoto and Furukawa; and
4) Claim 20 under 35 U.S.C. §103(a) as unpatentable over the
combined disclosures of Enomoto, Furukawa, and Mitzutani. (See App. Br.
6 and Reply Br. 3.)

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS AND CONCLUSION
I. REJECTION (1):
Appellants do not dispute the Examiner’s finding that Miyazaki
teaches a secondary battery comprising an electrode assembly comprising
positive and negative electrode plates having portions coated with an active
material and portions not coated with an active material (exposed portions)
Appeal 2011-005916
Application 11/191,018

5
for identification marks and for mounting terminals corresponding to the
claimed positive and negative electrode tabs3 (Compare Ans. 3-4 with App.
Br. 7-11 and Reply Br. 5-9; see also Miyazaki, col. 2, l. 10 to col. 3, l. 25
and col. 6, ll. 30-59.) Nor do Appellants dispute the Examiner’s finding that
Miyazaki impliedly teaches that a separator be interposed between the
positive and negative electrode plates. (Compare Ans. 4 with App. Br. 7-11
and Reply Br. 5-9.) Rather, Appellants contend that one of ordinary skill in
the art would not have been led to provide an identification mark on at least
one of the positive or negative electrode tabs (one of the terminals) in the
electrode assembly of the secondary battery taught by Miyazaki. (See App.
Br. 7-11 and Reply Br. 5-9.)
Thus, the dispositive question raised by the Examiner and Appellants
is: Has the Examiner reversibly erred in determining that one of ordinary
skill in the art, armed with the knowledge provided by the collective
teachings of Miyazaki and Furukawa, would have been led to provide an
identification mark on at least one of the positive or negative electrode tabs
(one of the terminals) in the electrode assembly of the secondary battery
taught by Miyazaki within the meaning of 35 U.S.C. §103(a)? On this
record, we answer this question in the negative.
Although the Examiner acknowledges that Miyazaki does not mention
that an identification mark be disposed on at least one of its positive and
negative electrode tabs (terminals), the Examiner has correctly found that

3 During the hearing on March 8, 2012, Appellants acknowledged that the
terminals mounted on the exposed portions of the positive and negative
electrode plates as illustrated in Figure 3 of Miyazaki correspond to the
claimed positive and negative electrode tabs.
Appeal 2011-005916
Application 11/191,018

6
Miyazaki teaches the importance of having an identification mark on
internal battery components, such as positive and negative electrode plates,
to effectively enhance assembling processes for producing the plates or for
easy identification and manufacture control of the plates. (See Ans. 3-4.) In
particular, Miyazaki teaches (col. 2, l. 55 to col. 3, l. 2) that:
A secondary battery is produced by using such electrode plate
through various assembling processes. In order to effectively
perform these processes with high accuracy, it is available to
apply process control marks, cutting marks, position alignment
marks and the like mark to the electrode plate and also apply
various identification marks or symbols such as manufacture lot
numbers, bar codes and the like for easy identification and
manufacture control of the electrode plate. However, the
marking of such identification marks with a printing ink . . . [is]
a problem[.] . . . [T]he printing ink marking the identification
mark is dissolved in an electrolyte in a battery after the
assembling thereof, which adversely affects . . . the
performance of the battery. [(See also Ans. 3-4.)]

Implicit in this teaching of Miyazaki is that some identification marks not
made of a printing ink are desirable for internal components of a battery for
the effective and accurate assembly and/or for easy identification and
manufacture control, especially for those internal components produced
from different production lines (different manufacture lots) prior to their
assembly.
Moreover, Furukawa, like Miyazaki, teaches the importance of using
an identification mark (production lot identifying a product line, etc. . . .) on
a battery to investigate and determine the source of the problem associated
with defects in the battery (paras. 004 and 005). Furukawa also teaches that
positive and negative metal electrode tabs (terminals) are useful for
Appeal 2011-005916
Application 11/191,018

7
providing an identification mark (unevenness having a predetermined shape
on the surface by piercing, implying engraving or embossing an
identification mark on the surface of a conductive metal electrode tab or
terminal) without the use of the printing ink (paras. 0008, 0010 and 0014).
According to Furukawa, this identification mark formed on the metal
electrode tabs or terminals is advantageous in that it is not erased when the
battery is subject to an ignition accident (paras. 0009, 0011, and 0014).
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ an identification
mark on at least one of the positive and negative electrode metal terminals
(tabs) mounted on the non-coated sections of the positive and negative
electrode plates of the electrode assembly of the secondary battery taught by
Miyazaki, with a reasonable expectation of successfully using it for the
effective and accurate assembly and/or easy identification and manufacture
control of such positive and negative electrode terminals (tabs) and/or their
associated positive and negative electrode plates, without the deleterious
effect associated with the printing ink. KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)(“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”)
In reaching this determination, we have carefully considered
Appellants’ argument that Furukawa teaches positive and negative electrode
tabs or terminals which are used for connecting batteries. In so arguing,
however, we note that Appellants fail to take into account the collective
Appeal 2011-005916
Application 11/191,018

8
teachings of Miyazaki and Furukawa. As indicated supra, Miyazaki
impliedly teaches the desirability of providing some identification marks for
internal components of a battery for the effective and accurate assembly or
easy identification and manufacture control via employing a particular
identification marking method that would avoid the deleterious effect
associated with the using the printing ink. Although Miyazaki does not
specifically mention using an identification mark on its positive and negative
electrode terminals (tabs), Furukawa teaches that when positive and negative
electrode metal tabs are used to provide an identification mark, it can be
formed by piercing, without the use of the deleterious printing ink as
indicated supra. Moreover, Furukawa teaches that such identification
marks, unlike other known identification marks, can withstand an ignition
accident associated with a battery as explained above.
It follows that the Examiner has not reversibly erred in determining
that one of ordinary skill in the art, armed with the knowledge reflected in
the collective teachings of Miyazaki and Furukawa, would have been led to
provide an identification mark on at least one of the positive and negative
electrode metal tabs (one of the terminals) in the electrode assembly of the
secondary battery taught by Miyazaki according to the method taught by
Furukawa within the meaning of 35 U.S.C. §103(a). KSR , 550 U.S. at 417
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”).

II. REJECTION (2):
Appeal 2011-005916
Application 11/191,018

9
With respect to the Examiner’s separate rejection of dependent claims
8 and 11 under 35 U.S.C. §103(a), Appellants assert that:
claim 1 is allowable over Miyazaki and Furukawa, and
Enomoto fails to cure the deficiencies of Miyazaki and
Furukawa noted above with regard to claim 1. Hence, claims 8
and 11 are allowable at least because they depend from an
allowable claim 1. [(See App. Br. 11.)]

Appellants provide no other arguments. Id. Thus, for the reasons set forth
above and in the Answer, we find no reversible error in the Examiner’s
determination at page 5 of the Answer that
[i]t would have been obvious to form the positive and
negative electrode tabs [or terminals] used in the battery of
Miyazaki, as modified by Furukawa, of aluminum and
nickel, respectively, because Enomoto teaches that aluminum
and nickel are suitable current-conducting materials for use
with positive and negative electrodes in a battery,
respectively.

III. REJECTIONS (3) AND (4)
As correctly argued by Appellants at pages 12 through 14 of the
Appeal Brief, one of ordinary skill in the art, armed with the knowledge
reflected in the collective teachings of Enomoto, Furukawa and Mitzutani
would not have been led to provide an identification mark to positive and
negative electrode tabs in the battery taught by Enomoto. As is apparent
from the Examiner’s own findings at page 6 of the Answer directed to
Rejection (3), Enomoto does not teach using any identification mark on or
in a battery and Furukawa teaches using an identification mark only on the
outside of a battery or batteries. Regarding Rejection (4) directed to
dependent claim 20, the Examiner further relies on Mitzutani for suggesting
Appeal 2011-005916
Application 11/191,018

10
the second identification mark formed on a cylindrical case and the cap
assembly required by claim 20, which does not cure the deficiencies of the
teachings of Enomoto and Furukawa with respect to the identification mark
on the positive and negative electrode tabs in a battery as required by
independent claim 19, from which claim 20 depends (App. Br. 14, Ans. 6-7).
On this record, the Examiner has not shown that the collective teachings of
Enomoto and Furukawa or Enomoto, Furukawa and Mitzutani would have
provided a reason or suggestion which would have prompted one of ordinary
skill in the art to provide an identification mark on positive and negative
electrode tabs in a battery,
It follows that the Examiner has reversibly erred in determining that
one of ordinary skill in the art, armed with the knowledge reflected in the
collective teachings of Enomoto and Furukawa or Enomoto, Furukawa, and
Mitzutani, would have been led to provide an identification mark on at least
one of the positive or negative electrode tabs (one of the terminals) in the
battery taught by Enomoto within the meaning of 35 U.S.C. §103(a).
CONCLUSION
We AFFIRM the rejections of claims1, 2, 5, 9, 11, 12, and 14 through
16 under 35 U.S.C. §103(a) as unpatentable over the combined disclosures
of Miyazaki and Furukawa; and claims 8 and 11 under 35 U.S.C. §103(a) as
unpatentable over the combined disclosures of Miyazaki, Furukawa, and
Enomoto.
We REVERSE the rejections of claim 19 under 35 U.S.C. §103(a) as
unpatentable over the combined disclosures of Enomoto and Furukawa; and
claim 20 under 35 U.S.C. §103(a) as unpatentable over the combined
disclosures of Enomoto, Furukawa, and Mitzutani.
Appeal 2011-005916
Application 11/191,018

11
Accordingly, the decision of the Examiner 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

ssl