Ex Parte Nam et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10374980 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUNG-IL NAM and YOUNG-HOON KIM
____________

Appeal 2009-011932
Application 10/374,980
Technology Center 1700
____________

Decided: April 28, 2010
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-19, 21, 23, and
25. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:

Appeal 2009-011932
Application 10/374,980

1. A secondary battery, comprising:

a can;

an electrode assembly provided inside said can; and

a cap assembly comprising:

a cap plate configured to seal an opening of said can encasing
the electrode assembly;

a tab plate mounted to one side of said cap plate to electrically
connect said electrode assembly;

an insulating plate interposed between said cap plate and said
tab plate;

an insulating gasket lying upon said cap plate; and

an electrode pin passing through said cap plate, said tab plate,
and said insulating plate to interconnect said cap plate, said tab plate,
and said insulating plate, said electrode pin comprising:

a shaft extending along an axis from engagement with
said tab plate and through said insulating plate, said cap plate
and said insulating gasket,

a head terminating the shaft and extending by a first radial
distance radially from said axis to provide a periphery engaging
the insulating gasket on an exterior side of the cap plate, and

a shoulder interposed between said shaft and said head
extending by a second and lesser radial distance radially from
said axis to provide a peripheral surface engaging the insulating
gasket, with axial thickness of said peripheral surface increasing
toward said insulating gasket as a function of said radial
distance from said axis.

2
Appeal 2009-011932
Application 10/374,980

The Examiner relies upon the following references as evidence of
obviousness (Ans. 2-3):
Lauck 2,565,313 Aug. 21, 1951
Takahashi 6,143,442 Nov. 07, 2000
Kim 2001/0004505 A1 Jun. 21, 2001
Kuroki ‘262 2003/0104262 A1 Jun. 05, 2003
Kuroki ‘658 (as translated) WO 02/01658 Jan. 03, 2002

Appellants’ claimed invention is directed to a secondary battery
comprising, inter alia, an electrode pin that passes through a cap plate, a tab
plate, and an insulating plate to interconnect said plates. The electrode pin
comprises a shaft and a terminating head and a shoulder interposed between
the shaft and the head. The shoulder provides a peripheral surface for
engaging an insulating gasket and the axial thickness of the peripheral
surface increases toward the insulating gasket as a function of the radial
distance from the axis of the shaft. The shoulder forms a concave peripheral
surface which engages the insulating gasket. The curved, concave shape of
the shoulder provides a longer path for leaking electrolyte to travel
compared to a shoulder that has a flat, planar peripheral surface.
The appealed claims stand rejected under 35 U.S.C. §103(a) as
follows:
(a) claims 1-6, 18, 19, 21, and 25 over Kim,
(b) claims 7 and 8 over Kim in view of Lauck,
(c) claims 14-17 over Kim in view of Takahashi,
(d) claims 9-11 and 23 over Kim in view of Kuroki ‘658, and
(e) claims 12 and 13 over Kim in view of Kuroki ‘658 and
Lauck.
3
Appeal 2009-011932
Application 10/374,980

We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with Appellants that the Examiner has failed to establish a prima facie case
of obviousness for the claimed subject matter. Accordingly, we will not
sustain the Examiner’s rejections.
Kim discloses a secondary battery similar to the one claimed. As
acknowledged by the Examiner, however, Kim does not disclose a shoulder
portion of the electrode pin having a concave peripheral surface for engaging
the insulating gasket. The Examiner offers the following in support of the
conclusion of obviousness:
Kim discloses the claimed invention except for the
shape of the "shoulder portion" of the electrode pin. It would
have been an obvious matter of design choice to change the
shape of the shoulder portion of the Kim reference since such
a modification would have involved a mere change in the
shape of a component. A change in shape is generally
recognized as being within the level of ordinary skill in the
art. In re Dailey 149 USPQ 47,50 (CCPA 1966). See also
Glue Co. v. Upton 97 US 3,24 (USSC 1878).

(Ans. 4, second para.).
It is well settled that mere matters of design choice, such as a change
in shape or configuration, which fail to solve any stated problem or produce
any unexpected result, are generally a matter of obviousness for one of
ordinary skill in the art. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). In
the present case, Appellants have disclosed a particular advantage of
providing the peripheral surface of the shoulder of the electrode pin with a
concave shape, namely, to retard the leakage of electrolyte from the battery.
The Examiner, on the other hand, has provided no fact-based analysis for
why such a modification of the shoulder of Kim’s electrode pin would have
4
Appeal 2009-011932
Application 10/374,980

been obvious to one of ordinary skill in the art. For example, the Examiner
has not presented any rationale based on electrolyte leakage being a known
problem in the secondary battery art, and that configuring the battery
element such that the path of leakage is lengthened would have been an
obvious solution for one of ordinary skill in the art. Rather, the Examiner
has apparently applied a per se rule of unpatentability to effectively dismiss
the claimed feature that structurally distinguishes Appellants’ secondary
battery from the battery disclosed by Kim and solves a stated problem.
Manifestly, such an approach for rejecting a claimed invention has been
consistently rejected by our reviewing Court.
The additional references cited by the Examiner fail to remedy the
deficiency of Kim discussed above.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.

REVERSED

ssl

ROBERT E. BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, D.C. 20006-1004
5