Ex Parte Miller

Board of Patent Appeals and Interferences

Jan 16, 2009

10669116 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT MILLER
____________

Appeal 2008-4954
Application 10/669,116
Technology Center 1700
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Decided: January 16, 2009
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
all pending claims 1, 2, 4, 7-17, and 19-27. (Appeal Brief filed September
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12, 2007, hereinafter “App. Br.”; Final Office Action entered June 1, 2007).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to an electrical energy storage device
including, inter alia, an identification code on a current collector, “wherein
the identification code relates to at least one of a weight of the current
collector and gram amount of electrode active material” contacting the
current collector. (Claim 1; Spec. 1, ll. 14-20; 2, ll. 10-17).
Representative claims 1 and 13 read as follows:
1. An electrical energy storage device, which comprises:
a) a first electrode comprising an electrode active
material contacted to a support portion of a current
collector;
b) a unique identification code etched into an exposed
portion of the current collector, wherein the
identification code relates to at least one of a
weight of the current collector and a gram amount
of the electrode active material;
c) a second, counter electrode;
d) a separator disposed between the first and second
electrodes to prevent direct physical contact
between them when they are in electrical
association with each other;
e) a casing housing the first and second electrodes;
and
f) a first terminal connected to the current collector
of the first electrode and a second, opposite
polarity terminal connected to the second
electrode.
13. An implantable medical device powered by an
electrochemical cell, the cell comprising:
a) a cathode comprising a current collector having a
support portion and a tab, wherein the support
portion of the current collector comprises opposed
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first and second major faces contacted with silver
vanadium oxide and fluorinated carbon,
respectively, while the tab remains exposed;
b) a unique identification code etched into the current
collector tab;
c) an anode;
d) a separator disposed between the cathode and
anode to prevent direct physical contact between
them when they are in electrical association with
each other;
e) a casing housing the cathode and anode; and
f) a first terminal connected to the current collector
of the cathode and a second, opposite polarity
terminal connected to the anode.
(App. Br. 19, 21, Claims Appendix)
The prior art references relied upon by the Examiner to reject
the claims on appeal are:
Merlin 5,552,574 Sep. 3, 1996
Lessar 6,006,133 Dec. 21, 1999
Miyazaki1 6,315,801 Nov. 13, 2001
Gan 6,790,561 Sep. 14, 2004

The following rejections are before us for review:
Claims 1, 2, 4, 7, 8, 12, 16, 17, 19-24, 26, and 27 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Lessar, Miyazaki,
and Merlin (Ans. 3-6); and

1 The Examiner refers to this reference as Miyazuki. (Ans. 3-14). Appellant
refers to this reference as both Miyazaki and Miyazuki. (App. Br. 10-18;
Reply Br. 2-7).
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Claims 9-11, 13-15, and 25 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Lessar, Miyazaki, Merlin, and Gan (Ans. 6-
9).
Appellant argues claims 1 and 16 together and does not submit
separate arguments for claims 2, 4, 7, 8, 12, 17, 19-24, 26, and 27.
Accordingly, we select claim 1 as representative of the issues on appeal for
the first rejection. 37 C.F.R. § 41.37(c)(1)(vii). With regard to the second
rejection, Appellant addresses claim 13, but does not separately address 9-
11, 14, 15, and 25. Accordingly, we select claim 13 as representative of the
issues on appeal for the second rejection. (Id.)
The Examiner found that Lessar teaches every limitation of claim 1
except for “an identification code on the exposed portion of the current
collector.” (Claim 1; Ans. 4, ll. 1-8). In addition, the Examiner found that
Miyazaki teaches forming identification marks on a current collector of an
electrode, although it does not teach etching the marks. (Ans. 4, ll. 9-10;
col. 4, l. 57 to col. 5, l. 11). The Examiner also found that Merlin teaches
etching identification marks on metal contacts of a card. (Id. at 5, ll. 12-14).
From these teachings, the Examiner concluded that it would have been
obvious to one of ordinary skill in the art to combine the teachings of the
prior art to arrive at the invention recited in appealed claim 1. (Id. at 6, ll. 3-
13).
Appellant, on the other hand, contends that there is no motivation to
combine Merlin with Lessar and Miyazaki because Miyazaki’s teachings
need no improvement and Merlin’s teachings are merely redundant to those
of Miyazaki. (App. Br. 15, ll. 14-24; 17, ll. 5-10). Furthermore, Appellant
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asserts that Merlin is in a different field of endeavor relative to the battery
art. (Reply Br. 6, ll. 8-16, 29-31).
Regarding the second rejection, the Examiner found the combined
disclosures of Lessar, Miyazaki, and Merlin teach every limitation of claim
13 except for electrode active material of silver vanadium oxide and
fluorinated carbon. (Ans. 7, ll. 4-7). However, the Examiner relied on
Gan’s teachings of an electrode with the claimed active material. (Id. at 7,
ll. 12-14). The Examiner concluded that it would have been obvious to one
of ordinary skill in the art to combine the teachings of Lessar, Miyazaki,
Merlin, and Gan to obtain the claimed invention. (Id. at 7, l. 15 to 8, l. 2).
Appellant contends that Gan does not provide a teaching of a unique
identification code in a cell construction and asserts that claim 13 has similar
patentable subject matter as recited in claim 1. (App. Br. 18, ll. 6-15).

ISSUES
Thus, the issues arising from the contentions of the Examiner and
Appellant are:
Has Appellant shown that the Examiner reversibly erred in
determining that a person having ordinary skill in the art would have found it
obvious to etch an identification code into Lessar’s current collector as
suggested by the collective teachings of Miyazaki and Merlin, thus arriving
at an electrical energy storage device encompassed by claim 1?
Has Appellant shown that the Examiner reversibly erred in
determining that a person having ordinary skill in the art would have found it
obvious to provide an electrode active material of silver vanadium oxide and
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fluorinated carbon as suggested by Gan, thus arriving at a device
encompassed by claim 13?

FINDINGS OF FACT
1. Appellant’s Fig. 2 is reproduced below:

Fig. 2 depicts a current collector 30 including a tab 36 having an ID
matrix identifier (i.e., identification code) 62. (Spec. 3, ll. 5-6; 5, ll. 7-
9).
2. Appellant’s Specification describes an ID matrix 62 etched into the
current collector that is, after it is scanned, associated with weight
values of the current collector and various component blanks that
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comprise a cell in a central processing unit or some other tangible
medium such as on a disk or printout. (Spec. 11, ll. 6-19).
3. The Specification describes an exemplary ID matrix 62 having a cell
model number and unique serial number. (Spec. 12, ll. 23-24).
4. Lessar discloses an electrical energy storage device for an implantable
medical device including: an assembly of anode and cathode layers
that are separated by interposed separator layers and impregnated with
an electrolyte, registration tabs extending from the cathodes and
anodes for electrically connecting the electrodes to each other and to
feedthroughs, and a case for receiving the assembly. (Col. 8, l. 59 to
9, l. 17).
5. Miyazaki discloses:
[A]n electrode plate for a secondary battery with a
nonaqueous electrolyte comprising a collector and an
active material layer which is formed of at least an active
material and a binder disposed on the collector, wherein
said electrode plate is provided with a terminal mounting
portion provided with a collector surface exposed to
mount a terminal, said exposed collector surface having
substantially the same shape and size as those of an area
to which the terminal is actually mounted. [Col. 3, ll. 35-
45].
6. Miyazaki discloses it is known that:
In order to effectively perform [assembling] processes
with high accuracy, it is available to apply process
control marks, cutting marks, position alignment marks
and the like mark[s] 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. [Emphasis added; col. 2, l. 64 to 3, l. 3].
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7. Miyazaki’s Figs. 9 and 14 are reproduced below:

Figs. 9 and 14 depict identification marks 8 formed on terminal
mounting portions 4 of an electrode plate 21 when solidifying agent 7
with solidifying agent permeating area 3a is removed from active
material layer 3 on collector 2. (Col. 16, ll. 9-25; col. 17, ll. 15-16, ll.
34-47).
8. Miyazaki discloses:
As the collector used for the electrode plate of the present
invention for a secondary battery with a nonaqueous
electrolyte, it is preferable to use a metallic foil such as
an aluminum foil, a copper foil or the like. Such a
metallic foil preferably has a thickness of from about 10
to 30 μm. [Col. 10, ll. 63-67].
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9. Appellant does not assert that Miyazaki’s identification code differs
from the claimed “unique identification code” (e.g., “cell model
number and a unique serial number”) in terms of content.
10. Merlin discloses etching information in layers of contacts in an
electronic chip card to form an indelible message with a controlled
level of fineness, which can be performed throughout the
manufacturing stages. (Col. 2, ll. 6-23).
11. Merlin discloses the contact layers are made from nickel and gold
with thicknesses of 1 and 0.1 μm, respectively. (Col. 3, ll. 15-19, 50-
54).
12. Gan discloses “a cathode having the configuration of: SVO/current
collector/CFx.” (Col. 2, ll. 36-37).
13. Appellant did not dispute the Examiner’s findings with respect to
Lessar, Miyazaki, and Merlin collectively disclosing every limitation
recited in appealed claim 1. (App. Br. 11-17; Reply Br. 2-7).
14. Appellant did not dispute the Examiner’s findings with respect to
Lessar, Miyazaki, Merlin, and Gan collectively disclosing every
limitation recited in appealed claim 13. (App. Br. 18; Reply Br. 2-7).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
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“The patentability of a product does not depend on its method
of production. . . . If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). See also In re ICON Health and Fitness, Inc., 496
F.3d 1374, 1380 (Fed. Cir. 2007).
“When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one.” KSR, 127 S. Ct. at 1740. According to KSR, “[i]f a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. “For the same reason, if 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.”
Id. Furthermore, “‘familiar items may have obvious uses beyond their
primary purposes.’” In re ICON Health, 496 F.3d at 1380 (quoting KSR,
127 S. Ct. at 1742).
ANALYSIS
Obviousness Rejection of Claims 1, 2, 4, 7, 8, 12, 16, 17, 19-24, 26, and 27
in View of Lessar, Miyazaki, and Merlin
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Claim 1
Claim 1 recites an electrical energy storage device, which comprises,
in relevant part, “a unique identification code etched into an exposed portion
of the current collector, wherein the identification code relates to at least one
of a weight of the current collector and a gram amount of the electrode
active material.” Claim 1, however, does not require (as part of the claimed
device) a central processing unit or other tangible medium that associates the
unique identification code to “relate[] to a weight of the current collector and
a gram amount of the electrode active material.” (FF 1-3). Therefore, the
unique identification code of claim 1 simply reads on a model number and
serial number.
Appellant does not assert that the claimed unique identification code
differs from the identification codes disclosed in Miyazaki. (FF 5-9). That
is, Appellant does not contest the Examiner's findings that the collective
teachings of the prior art disclose every claim limitation. (FF 13). Rather,
Appellant contends: “[O]ne skilled in the art at the time of the present
invention having the benefit of Miyazuki et al. would not have been
motivated to look to Merlin et al. to arrive at [Appellant’s] claims.” (App.
Br. 16, ll. 19-22).
Appellant’s contention is not persuasive to demonstrate that the
Examiner erred in determining the claimed subject matter would have been
obvious in view of the prior art. First, Appellant has not shown that the
process of etching the claimed identification code into the current collector
distinguishes the resulting markings over those described in Miyazaki. In
this regard, the process for making a claimed device cannot impart
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patentability when the claimed product is the same or obvious from the prior
art. In re Thorpe, 777 F.2d at 697.
Applying this principle, Miyazaki discloses an identification code
having raised portions formed on a current collector with electrode active
material. (FF 7). Here, it reasonably appears that the prior art code and the
claimed etched identification code have the same structure because each
comprise raised portions that form the code. Appellant has not provided any
persuasive evidence that the process of etching would result in a claimed
device that is structurally different from the prior art.
Even if etching forms an identification code with a different structure
relative to the identification code disclosed by Miyazaki, the Examiner
found Merlin teaches etching for marking metal contacts and concluded that
a person having ordinary skill in the art would have been led to combine it
with Lessar and Miyazaki “since etching can be performed at any stage in
the manufacturing process . . . thus allowing more flexibility” and “also
offers advantages over active material deposition because it is not
susceptible to damage . . . .” (FF 10; Ans. 11-12).
In response to the Examiner’s determination, Appellant argues:
It would be one thing if Merlin et al. was etching something to
do with a battery. Instead, they teach laser etching the
connector of a chip card, bank card, telephone card, and the
like. . . . Not only would one skilled in the art have to first
realize that Miyazuki et al. needed improvement, even though
there's no indication of that, but they would have to then decide
it was best to look outside the battery arts to the chip card arts
and then finally realize that a patent teaching laser etching in a
totally unrelated art for an unrelated purpose could be used to
improve a process [Miyazuki et al.] that likely required no
improvement. [Reply Br. 6, ll. 4-16].
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Appellant’s argument is unpersuasive. Merlin discloses etching metal
contacts in an electronic chip card to form an indelible message with a
controlled level of fineness, which can be performed throughout the stages
of manufacturing. (FF 10). Like Appellant, Merlin is concerned with the
problem of printing information into a substrate. (FF 1, 2, and 10). Thus,
while not within Appellant’s field of endeavor, Merlin’s teaching is
reasonably pertinent to the same problem addressed by Appellant.
Therefore, Merlin is analogous art. In re Bigio, 381 F.3d at 1325.
Furthermore, Miyazaki discloses forming identification marks on thin metal
substrates. (FF 8). Merlin teaches laser etching on thin metal substrates to
form indelible marks with controlled fineness. (FF 10 and 11). Thus, it
would have been obvious to one of ordinary skill in the art to modify
Miyazaki’s method of forming an identification code by using Merlin’s
technique of etching to obtain a predictable result. KSR, 127 S. Ct. at 1740.
In other words, a person having ordinary skill in the art would have found it
obvious to use Merlin’s etching technique (Facts 10 and 11) in lieu of
Miyazaki’s solidifying/peeling technique (Fact 7) based on the expectation
that these techniques would be interchangeable ways to provide an indelible
marking in or on a metallic substrate. Appellant has not shown that the
claimed etching technique is beyond the skill of one of ordinary skill in the
art.
Appellant’s argument that Miyazaki needs no improvement and
therefore one of ordinary skill in the art would not look to Merlin to modify
Miyazaki’s teachings lacks persuasive force. Appellant has not shown any
persuasive evidence that Miyazaki would not benefit from an indelible
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identification mark that could be formed with a controlled level of fineness,
or that such a mark would make Miyazaki’s current collector inoperable.
For the reasons discussed above, Appellant has failed to show the
Examiner erred in determining claims 1, 2, 4, 7, 8, 12, 16, 17, 19-24, 26, and
27 would have been obvious in view of the prior art.

Claims 9-11, 13-15, and 25 Rejected As Obvious in View of Lessar,
Miyazaki, Merlin, and Gan
Claim 13
Appellant asserts: “Gan . . . lacks any recognition that it is useful in a
cell construction to provide a current collector for an electrode with a unique
identification code” and relies on the same arguments as presented with
respect to claim 1 above to support patentability of claim 13. (App. Br. 18,
ll. 10-15). Appellant’s assertions are unpersuasive. Appellant does not
dispute the Examiner’s factual finding that Gan discloses “a cathode having
the configuration of: SVO/current collector/CFx.” (FF 12 and 14). Based
on this finding, the Examiner concluded that it would have been obvious to
combine the teachings of Lessar, Miyazaki, Merlin, and Gan “to create a cell
structure that could share both ions and electrons during cell discharge.”
(Ans. 7, l. 12 to 8, l. 2). For the same reasons as discussed above with
respect to Lessar, Miyazaki, and Merlin, Appellant’s assertions with respect
to the identification code fail to show that the Examiner erred in determining
that the claimed subject matter would have been obvious in view of the prior
art.

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CONCLUSION
Appellant has not shown that the Examiner reversibly erred in
determining that a person having ordinary skill in the art would have found it
obvious to etch an identification code into Lessar’s current collector as
suggested by the collective teachings of Miyazaki and Merlin, thus arriving
at an electrical energy storage device encompassed by claim 1.
Appellant has also failed to show that the Examiner reversibly erred in
determining that a person having ordinary skill in the art would have found it
obvious to provide an electrode active material of silver vanadium oxide and
fluorinated carbon as suggested by Gan, thus arriving at a device
encompassed by claim 13.

ORDER
The decision of the Examiner rejecting claims 1, 2, 4, 7-17, and 19-27
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)(1)(iv).

AFFIRMED

rvb

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