Ex Parte Uetani et al

Board of Patent Appeals and Interferences

May 21, 2012

10724882 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIHIRO UETANI, KEISUKE KII,
and SATOSHI NISHIKAWA
____________

Appeal 2010-009043
Application 10/724,882
Technology Center 1700
___________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-7, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Yuji (JP 2002-110245A, published Apr. 12, 2002; as
translated) in view of Nakagawa (US 2003/0064282 A1, published Apr. 3,
2003). The Examiner also provisionally rejected the claims on the ground of
nonstatutory obviousness-type double patenting rejected the claims over
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Application 10/724,882

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copending Application Nos. 11/267,404 and 10/569,417. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 reads as follows:
1. A crosslinking polymer-supported porous film for battery
separator, the crosslinking polymer-supported porous film comprising:

a porous film substrate; and

a crosslinking polymer layer formed on the porous film substrate so as
to be in contact with the porous film substrate consisting of a crosslinking
polymer having plural cation-polymerizable functional groups and being
polymerizable in the presence of cation.

At the outset, we note that Appellants do not address and do not offer
any argument directed to the substance of the provisional rejections in the
Final Rejection over copending application Serial Nos. 11/267,404 and
10/569,417 based on the doctrine of obviousness-type double patenting
(Final Rejection 7-8). Thus, we need not substantively review the
provisional rejections. However, the provisional rejection based on SN
10/569,417 is moot since that case is now abandoned. On this record, we
summarily affirm the provisional rejection based on SN 11/267,404.
With respect to the prior art rejection on appeal, Appellants do not set
forth separate, substantive arguments for any particular claim on appeal.
Accordingly, all of the appealed claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter would have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art. Notably, we agree with
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Application 10/724,882

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the Examiner that it would have been prima facie obvious to use the
crosslinking polymer layer of Yuji as a layer on a porous film as exemplified
in Nakagawa to be an alternative to incorporating a crosslinkable monomer
(or polymer) in a liquid electrolyte (Ans. 5, paras. 5, 6).
Appellants argue that Nakagawa teaches a crosslinkable monomer
solution, not a crosslinkable polymer solution, thus one of skill in the art
would not have been motivated to form a crosslinkable polymer layer (Br.
11). Appellants also argue that if Yuji were modified to have an
uncrosslinked material, it would be rendered inoperable for its intended
purpose (Br. 12). These arguments are unavailing.
Appellants do not dispute the Examiner’s finding that Yuji “discloses
[the] same crosslinking polymer . . . as claimed by applicant” and that this
polymer is injected into the airtight battery as a liquid crosslinkable
electrolyte composition which infiltrates gaps such as electrodes and a
separator (Ans. 4; see generally Br.). As explained by the Examiner,
Nakagawa teaches that forming a crosslinkable monomer as a layer on a
porous film separator is an alternative to, and improvement over,
incorporating a crosslinkable monomer in a liquid electrolyte (Ans. 5).
One of ordinary skill in the art using no more than ordinary creativity
would have found it obvious to apply the concept taught in Nakagawa with
respect to as crosslinkable monomer to Yuji’s crosslinkable polymer.
Accordingly, a person of ordinary skill in the art would have reasonably
expected that use of the crosslinkable polymer as exemplified in Yuji as a
layer on a separator in Yuji’s battery would have provided a polymer layer
that avoids bleeding of the electrolyte.
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Application 10/724,882

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Notably, Appellants do not direct us to any credible evidence or
persuasive technical reasoning to rebut the Examiner’s reasonable
determination that “one of ordinary skill in the art would recognize that in
the finished product (i.e. when the battery containing a crosslinking
polymer-supported porous film as a battery separator is assembled) one of
ordinary skill would crosslink the polymer layer in order to avoid bleeding
of the electrolyte” (Ans. 9, para. 17; emphasis in original; no responsive
brief has been filed).
Accordingly, we sustain the § 103 rejection of all of the appealed
claims.
The decision of the Examiner 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).
AFFIRMED

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