Ex Parte Nakura et al

Board of Patent Appeals and Interferences

Sep 29, 2010

11658143 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/658,143 01/23/2007 Kensuke Nakura 043888-0555 2327
53080 7590 09/29/2010
MCDERMOTT WILL & EMERY LLP
600 13TH STREET, NW
WASHINGTON, DC 20005-3096
EXAMINER
ENIN-OKUT, EDU E
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KENSUKA NAKURA
and MIKINARI SHIMADA
______________

Appeal 2010-000828
Application 11/658,143
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
LORA M. GREEN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 3, 4, and 5 in the Office Action mailed

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000828
Application 11/658,143
2
August 1, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2008).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a lithium ion secondary
battery, and is representative of the claims on appeal:
1. A lithium ion secondary battery comprising: a positive electrode
comprising a composite lithium oxide; a negative electrode capable of
charge and discharge; a separator; and a non-aqueous electrolyte comprising
a non-aqueous solvent and a solute dissolved therein,
wherein said separator comprises at least one heat-resistant porous
film and at least one shut-down layer,
a porous membrane is bonded to a surface of at least one selected
from said positive electrode and said negative electrode, and
said porous membrane comprises an inorganic oxide filler and a
binder,
wherein said heat-resistant porous film comprises a heat-resistant
resin with a heat deformation temperature of 200 ºC or more.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1, 3, 4, and 5 over
Tsutomu (JP 2000-100408 A) in view of Yoshito (JP 9-190814 A).2 App.
Br. 3; Ans. 3.
Appellants argue the claims in each ground of rejection as a group.
Thus, we decide this appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2008).

2 The Examiner refers to the “machine translation” and “Abstract” prepared
by the Japanese Patent Office as translations of the Japanese patent
documents. See generally Ans. We refer to the machine translations and
Abstracts in our opinion by the name of the first appearing and sole
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Application 11/658,143
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Opinion
Appellants do not dispute the Examiner’s findings that Tsutomu
would have described to one of ordinary skill in the art a lithium secondary
battery that meets the claim limitations of a separator that comprises at least
one heat-resistant porous film having the specified heat deformation
temperature and at least one shutdown layer; and that Yoshito would have
described to this person a lithium secondary battery that meets the claim
limitations of a porous membrane that comprises an inorganic oxide filler
and a binder and is bonded to at least one surface of the positive electrode
and negative electrode. Ans. 3-4, citing Takashi ¶¶ 0010, 0012, 0013, 0018,
0023, 0026, and Yoshito ¶¶ 0008, 0009, 0011, and 0015; App. Br., e.g., 5.
Appellants submit that the Examiner erred in combining Tsutomu and
Yoshito. App. Br. 5. According to Appellants, Tsutomu and Yoshito
respectively disclose that the battery having the described structure safely
prevent the spread of internal short-circuits, and thus, the combination of the
two references would result in achieving the purpose of preventing the
spread of internal short-circuits. App. Br. 5. Appellants thus argue that as
each of Tsutomu and Yoshito has solved the internal short-circuit problem
independently of the other, there is no rationale or cost advantage which
would motivate one of ordinary skill in the art to combine the two references
to arrive at the claimed lithium secondary battery. App. Br. 5-6 and 9; Reply
Br. 2-3.

inventors set forth in the Abstracts of the documents referred to as
“Takahashi” and “Murayama” in the Answer and the Briefs. Ans. 3.
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Appellants further submit that neither Tsutomu nor Yoshito would
have described the unexpected advantages of safely preventing internal
short-circuits and “ensuring . . . safety under overcharge conditions when a
separator including a heat-resistant porous film is used” as disclosed in the
Specification. App. Br. 5-8, citing Spec. ¶¶ 0009, 0010, and
0019-0021. Reply Br. 2-4. Appellants argue that the references thus do not
teach the unexpected superior result demonstrated in Specification Tables 3
and 4 which show that during “overcharge conditions,” the highest
temperature exhibited by the claimed batteries in Examples 1-19 was 137ºC,
and the batteries of Comparative Examples 1-13 exhibited temperatures in
the range of 149-181ºC. App. Br. 8; Reply Br. 4.
We agree with the Examiner’s findings that Tsutomu would have
disclosed that when the separator for a lithium secondary battery consists of
only a heat resistant porous film, safety considerations exist from the
possibility that the battery will not shutdown when subjected to internal or
external heating accompanying high-speed charge and discharge; and a fully
charged battery with a separator having a heat resistant porous film and a
shutdown layer does not explode or ignite when subjected to “collapse
examination.” Ans. 5, 6-7, and 8, citing Tsutomu ¶¶ 0004, 0011, 0012, and
0045, and Abstract. We further find that Tsutomu acknowledges that it was
known in the art that safety is a concern with lithium secondary batteries in
view of heat generated from internal and external short-circuits which can
result in a “thermal runaway” as “represented by collapse examination.”
Tsutomu ¶¶ 0003 and 0008; see also Tsutomu Abstract. We also agree with
the Examiner’s finding that Yoshito would have disclosed that a battery
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Application 11/658,143
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having a porous membrane “prevents the spread of an internal short circuit
in the case of generation of heat by, for example, an external short circuit.”
Ans. 4 and 6, citing Yoshito ¶ 0009 and Abstract.
On this record, we cannot subscribe to either of Appellants’ positions.
We are of the opinion that one of ordinary skill in this art would have
combined Tsutomu and Yoshito to take advantage of the battery structure
that each provides for safely preventing the spread of internal short-circuits
resulting from internal and external sources. Thus, this person would have
had the reasonable expectation of obtaining a lithium secondary battery with
a separator having a heat resistant porous membrane and shutdown layer and
a porous membrane of a binder containing inorganic oxide fillers on a
surface of an electrode, that has increased safety with respect to internal and
external short-circuits, an art recognized objective. See, e.g., KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.”); In re Kahn, 441 F.3d 977, 985-88 (Fed.
Cir. 2006); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . . what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”); see also, e.g., Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1364 (Fed. Cir. 2007) (“the expectation of success need only be
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Application 11/658,143
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reasonable, not absolute”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
We are not persuaded otherwise by Appellants’ contentions that the
combination of Tsutomu and Yoshito would not have suggested the
additional, unexpected advantage of safety in overcharge conditions as
disclosed in the Specification. Indeed, the fact that Appellants have
discovered a different reason to combine Tsutomu and Yoshito to arrive at
the claimed battery encompassed by claim 1 that is not expressly taught by
the references, does not patentably distinguish claim 1 over the combination
of Tsutomu and Yoshito. See, e.g., In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992) ((citing, inter alia, In re Kronig, 539 F.2d 1300, 1304 (CCPA
1976)) (“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.”); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re
Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc)).
With respect to the evidence in Specification Tables 3 and 4, we find
that Table 3 reports the “Highest Temperature” with respect to “Overcharge
Safety” for Examples 1-19, illustrating lithium secondary batteries
encompassed by claim 1, range from 120 to 137ºC. Spec. 33. We further
find that Table 4 reports the “Highest Temperature” with respect to
“Overcharge Safety” for Comparative Examples 1-13 illustrating lithium
secondary batteries which have different structures than the batteries of
Examples 1-19. Spec. 35. The batteries of Comparative Example 1, 5, and
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7
9 have only a separator consisting of a heat resistant porous layer and exhibit
a temperature in the range of 180-181ºC. The batteries of Comparative
Example 2, 3, 6, 7, 10, and 11 have a separator consisting of a heat resistant
porous layer and a porous membrane on the surface of either the positive or
negative electrode, and exhibit a temperature in the range of 149-150ºC.
The batteries of Comparative Example 4, 8, and 12 have a separator
consisting of a heat resistant porous layer and a shutdown layer, and exhibit
a temperature in the range of 164-167ºC. See Spec. 20-28.
Appellants have the burden of establishing, with evidence or
argument, the practical significance of the asserted results to one of ordinary
skill in this art, and why this person would have found the results
unexpected in light of the combined teaching of Tsutomu and Yoshito as
applied to claim 1. See, e.g., Pfizer, 480 F.3d at 1371 (“[B]y definition, any
superior property must be unexpected to be considered as evidence of non-
obviousness.” (citations omitted.)); In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re Merck & Co., Inc., 800 F.2d 1091, 1099 (Fed. Cir. 1986);
In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985); In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973); In re Lindner, 457 F.2d 506, 508
(CCPA 1972); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); In re
D’Ancicco, 439 F.2d 1244, 1248 (CCPA 1971). We are of the view that
Appellants have not carried their burden.
We find that the batteries of Comparative Examples 2, 3, 6, 7, 10, and
11, having a separator consisting of a heat resistant porous layer and a
porous membrane on the surface of either the positive or negative electrode,
are the closest comparison to the claimed batteries of Examples 1-19
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Application 11/658,143
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because the difference is that the claimed batteries have a separator that
additionally includes a shutdown layer. The claimed batteries exhibit a
temperature range that has an upper limit of 137ºC and the batteries of
Comparative Examples 2, 3, 6, 7, 10, and 11 exhibit a temperature range of
149-150ºC. As the Examiner points out, one of ordinary skill in the art
would reasonably expect that the difference of the presence and absence of
the shutdown layer would be reflected in the difference in temperature. Ans.
8-9. Appellants do not account for these differences. See Reply Br.
4-5. We agree with the Examiner. Indeed, Tsutomu would have disclosed
that a shutdown layer can result in further safety from internal short-circuits
when subjected to internal or external heating accompanying high-speed
charge and discharge. See above p. 4. Thus, on this record, we find that the
differences in temperature between the claimed batteries and the compared
batteries which differ in the absence of a separator having a shutdown layer
would have been reasonably expected by one of ordinary skill in the art over
the combined teachings of Tsutomu and Yoshito.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Tsutomu and Yoshito with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1, 3, 4, and 5 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

Appeal 2010-000828
Application 11/658,143
9
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

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MCDERMOTT WILL & EMERY LLP
600 13TH STREET NW
WASHINGTON, DC 20005-3096