Ex Parte Usami et al

Patent Trial and Appeal Board

Apr 27, 2017

13141436 (P.T.A.B. Apr. 27, 2017)

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.
13/141,436 08/24/2011 Yasushi Usami 381297US99X PCT 5202
22850 7590 05/01/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
GILLIAM, BARBARA LEE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
05/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUSHIUSAMI, TAKEYOSHI YAMADA,
EIKI YASUKAWA, and TAKAYUKINAKAJIMA
Appeal 2015-004263
Application 13/141,436
Technology Center 1700
Heard: April 18, 20171
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting claims 14, 16—20, and 22—27. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.3
1 A copy of the transcript of the oral hearing will be made of record upon its
availability.
2 According to Appellants, the real party in interest is Mitsubishi Plastics,
Inc. and Mitsubishi Chemical Corporation. Appeal Br. 1.
3 Our decision refers to the Specification (Spec.) filed August 24, 2011, the
Examiner’s Final Office Action dated February 5, 2014, Appellants’ Appeal
Appeal 2015-004263
Application 13/141,436
STATEMENT OF THE CASE
The invention relates to a battery separator and a non-aqueous lithium
secondary battery incorporating the separator. Spec. 11; claims 14 and 25.
Claim 14, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
14. A separator, comprising a porous layer comprising a
polypropylene resin as a main component thereof,
wherein an arithmetic average roughness Ra of at least one
surface of the separator is set to not less than 0.3 pm, and a mean peak
spacing (Sm) of a roughness of at least one surface of the separator is
set to not less than 1.3 pm,
wherein the separator is suitable for a battery.
Rejections
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
Brief (Appeal Br.) filed June 23, 2014, the Examiner’s Answer (Ans.) dated
December 26, 2014, and Appellants’ Reply Brief (Reply Br.) filed February
20, 2015.
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1. Claims 14, 16—19, 23, 25, and 26 as unpatentable over
Watanabe4 in view of Ito;5
2. Claims 20 and 24 as unpatentable over Watanabe in view of Ito,
and further in view of Higuchi;6
3. Claim 22 as unpatentable over Watanabe in view Ito, and
further in view of Masuda;7
4. Claim 27 as unpatentable over Watanabe in view of Ito, and
further in view of Murata;8 and
5. Claim 19 as unpatentable over Watanabe in view of Ito, as
evidenced by Yamamoto9 10 11and Hettiarachchy.10,11
4 Watanabe et al., JP 09-245762, published Sept. 19, 1997. The Examiner
relies on, without dispute, a machine translation of this reference which we
refer to as “Watanabe” in this Decision.
5 Ito et al., WO 2008/078755 Al, published July 3, 2008. The Examiner
relies on, without dispute, Ito et al., US 2009/0280407 Al, published Nov.
12, 2009, as an English-language equivalent which we refer to as “Ito.”
6 Higuchi et al., JP 09-219184, published Aug. 19, 1997. The Examiner
relies on, without dispute, a machine translation of the reference which we
refer to as “Higuchi.”
7 Masuda et al., WO 2007/046226 Al, published Apr. 26, 2007. The
Examiner relies on, without dispute, Masuda et al., US 2009/0219672 Al,
published Sep. 3, 2009, as an English-language equivalent which we refer to
as “Masuda.”
8 Murata et al., WO 2008/093575 Al, published Aug. 7, 2008. The
Examiner relies on, without dispute, Murata et al., US 2010/0285348 Al,
published Nov. 11, 2010, as an English-language equivalent which we refer
to as “Murata.”
9 Yamamoto et al., US 6,559,195 Bl, issued May 6, 2003, which we refer to
as “Yamamoto.”
10 Hettiarachchy et al., US 2005/0053640 Al, published Mar. 10, 2005,
which we refer to as “Hettiarachchy.”
11 The Examiner designates this as a new ground of rejection. Ans. 2.
Appellants respond to this rejection in the Reply Brief. Reply Br. 3.
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ANALYSIS
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellants’ claims and Specification
disclosures, we determine that the Appellants’ arguments are insufficient to
identify reversible error in the Examiner’s obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we sustain the
stated obviousness rejections for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner’s Answer. We offer the
following for emphasis.
For purposes of this appeal, to the extent that the claims on appeal are
separately argued, we will address them separately consistent with 37 C.F.R.
§ 41.37(c)(l)(vii).
Rejections 1 and 5: Obviousness over Watanabe and Ito, alone or as
evidenced by Yamamoto and Hettiarachchy
Claim 14
Appellants argue that the Examiner’s proposed combination of
Watanabe and Ito is erroneous because Watanabe is directed to a battery
separator, whereas Ito is directed to a battery current collector. Appeal Br.
4—6; Reply Br. 4—5. According to Appellants, it is well-known that in
battery assemblies containing current collectors, electrodes, and separators,
the electrodes are on each side of the separator and each current collector is
on an opposite side of a respective electrode. Appeal Br. 5—6. As such,
Appellants contend that separators and current collectors have distinctly
different functions and properties. Id. at 6. Without Appellants’ disclosure,
Appellants argue that the skilled artisan would not have looked to Ito’s
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current collector to address any problem regarding Watanabe’s separator.
Id. Appellants further urge, therefore, that any problem with regard to active
material separation from Ito’s current collector is manifestly different from
Watanabe’s core omission problem. Id. Appellants assert that Watanabe
does not appear to have any problem with active material separation from
the separator, especially since Ito discloses that such separation manifests
during battery use. Id.
Appellants’ arguments are not persuasive of reversible error. To
begin, we note there is no dispute that separators, like current collectors, are
in contact with the electrodes and with the active material thereof. Ans. 3^4.
Therefore, notwithstanding the different functions and properties of
separators and current collectors, the ordinary artisan reasonably would have
expected that modifying Watanabe in the manner taught in Ito would aid in
preventing separation of active material in contact with the separator.
Moreover, we further note that Ito’s arithmetic average surface roughness,
Ra, of 0.3 pm or more substantially overlaps Watanabe’s Ra range of 0.22—
1.5 pm. Appellants have not presented evidence or persuasive technical
reasoning that a separator in contact with active material of an electrode
would not encounter the same separation problem Ito’s current collector
addresses. As such, on this record, a preponderance of the evidence supports
the Examiner’s conclusion that modifying Watanabe’s separator to provide a
mean peak spacing, Sm, of at least one surface of the separator to not less
than 1.3 pm in order to inhibit separation of active material from the
separator would have been obvious to one of ordinary skill in the art.
Appellants further argue that there is no clear support for the
Examiner’s finding that Ito teaches an Sm as recited in claim 14. Appeal Br.
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6—7. Appellants urge that Ito’s pitch, S, is different from Appellants’ Sm.
Id. at 7. However, Appellants do not explain how or why the Examiner’s
finding that Ito’s pitch S, which is the distance between projections, would
not be considered to meet Appellants’ Sm, which is the mean peak spacing.
While Appellants urge that Ito’s S is calculated differently from Appellant’s
Sm (Reply Br. 6), we note both relationships express the mean distance
between peaks or projections. Ito’s first pitch SI is the distance between a
first set of parallel virtual lines along which the projections are disposed and
second pitch S2 is the distance between a second set of parallel virtual lines
intersecting the first set of lines at the projections, thereby forming a regular
pattern of projections. Ito teaches that both SI and S2 are preferably in the
range of 3—100 pm, leaving no doubt that Ito’s mean peak spacing must be
greater than 1.3 pm.
Appellants additionally argue that Watanabe fails to recognize surface
roughness has any effect on electrical properties, let alone an improvement
in battery cycle properties. Appeal Br. 7. As for Ito, Appellants urge that
any improvement taught in Ito is irrelevant as such improvement would have
been expected relative to a situation where active material has separated
from the current collector. Id. However, as the Examiner aptly finds (Ans.
5), Appellants fail to argue or direct our attention to any evidence of
unexpected results, in electrical properties or otherwise.
Claim 16
Claim 16 depends from claim 14 and further requires a 10-point
average roughness, Rz, of at least one separator surface is set to not less than
5 pm. Appellants argue that Ito teaches a 10-point average roughness, Rz,
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of 0.9—9 pm, which is the surface roughness at the top of the primary
projections including the secondary projections, whereas Appellant’s Rz is a
measurement at the surface of the separator. Appeal Br. 8. Appellants
further argue that, even if Ito’s Rz happens to overlap that of claim 16, Ito
“discloses and suggests nothing with regard to an Rz at at least one surface
of a separator.” Id.
These arguments are not persuasive of reversible error. As the
Examiner notes (Ans. 6), it is not clear how Ito’s 10-point average
roughness, Rz, which is a measure of the projections on the surface of the
collector and facilitates the bond between the collector surface and the
electrode active material, is not at the surface thereof. Indeed, Appellants
fail to direct our attention to any disclosure explaining how the recited Rz in
claim 16 does not include the peaks or projections of the separator surface.
Accordingly, Appellants do not identify reversible error in the Examiner’s
rejection of claim 16.
Claim 17
Claim 17 depends from claim 14 and further requires the ratio of an
arithmetic average roughness, Rap, of at least one surface of the separator in
a longitudinal direction to an arithmetic average roughness, Rav, of the
surface in a width direction is set to 0.80 to 1.20. Appellants argue that the
Examiner’s finding that Watanabe’s ratio is about 0.15 to 6.8 assumes,
without justification, that Ra therein would vary throughout their disclosed
range for any particular separator. Appeal Br. 9; Reply Br. 7. Appellants
further assert that it is not clear how the Examiner’s calculation provides a
ratio of average roughnesses. Id.
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In response, the Examiner provides a reasonable basis of the
calculation (Ans. 7). As for Appellants argument that the Examiner’s
finding requires an assumption that Ra would vary throughout their
disclosed range, Appellants misapprehend the Examiner’s obviousness
position—that obviousness lies where the claimed range is encompassed by
the disclosed range of the prior art absent a showing of unexpected results
for the claimed range. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). Moreover, as the Examiner correctly notes, both Watanabe and Ito
teach Ra’s that are measures of the arithmetic average surface roughness.
We, therefore, are not persuaded of reversible error in the Examiner’s
rejection of claim 17.
Claim 18
Claim 18 depends on claim 14 and further requires any one of Ra, Ry,
and Rz for one surface of the separator is different from that of another
surface of the separator. Appellants argue that Watanabe and Ito teach or
suggest nothing with regard to this feature. Appeal Br. 11. In addition,
Appellants urge that the Examiner has cited no evidence that differing a
roughness parameter would “ensure that the differing electrode active
materials in contact with opposing sides of the separator are prevented from
separating from it.” Reply Br. 7.
We note that claim 18 neither limits nor specifies any amount that one
roughness parameter of one surface is different from another surface. In this
regard, Appellants conceded at oral hearing that claim 18 is broad enough to
encompass manufacturing tolerances that might provide slightly different
roughness measurements for each surface. We are, therefore, constrained to
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hold that, given such breadth, the ordinary artisan would have reasonably
expected in manufacturing Watanabe’s separator to arrive at different
roughness measurements for different surfaces thereof due to manufacturing
tolerances.
Claim 19
Claim 19 depends from claim 14 and further requires a porous layer
thickness of 5—50 pm and a puncture strength of 1.5N. Appellants argue that
Watanabe discloses and suggests nothing with regard to puncture strength,
nor the effect that it has on short circuit probability. Appeal Br. 12.
However, the Examiner replies that Watanabe does indeed teach that the
separator’s film strength is directly related to the ability to cause internal
short-circuit. Ans. 8, citing Watanabe 110. The Examiner also finds
Watanabe teaches it is the roughness of the porous film, not the mating
material, that affects its mechanical strength and ease of fracture. Ans. 8,
citing Watanabe 120. As the Examiner finds, the skilled artisan would
reasonably recognize that the fracture ability of the separator is related to its
puncture strength. Ans. 8. As such, the Examiner determines that discovery
of an optimum value for puncture strength would merely involve routine
skill in the art. Id. Appellants do not dispute these findings or the
Examiner’s determination above in the Reply Brief. See Reply Brief 3 and
7.
The Examiner alternatively relies on Yamamoto and Hettiarachchy as
evidence that it was known in the art that film fracture is related to puncture
strength, which is an indicia of mechanical strength. Ans. 2—3. Appellants
argue that Hettiarachchy has nothing to do with battery separators and
Yamamoto determines puncture strength at a piercing speed of 1200
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mm/min whereas Appellants determine puncture strength at a piercing speed
of 300 mm/minute. However, as we indicated above, the determination of
the appropriate puncture strength for Watanabe’s separator would have been
within the routine skill in the art. Yamamoto and Hettiarachchy, therefore,
merely provide additional evidence in support of this position. Further,
Appellants have not shown that the piercing speed alone will prevent the
ordinary artisan from arriving at the puncture strength value recited in claim
19.
Accordingly, Appellants arguments are not persuasive of reversible
error in the Examiner’s rejections of claim 19 over the combination of
Watanabe and Ito, alone or as evidenced by Yamamoto and Hettiarachchy.
Claim 23
Claim 23 depends from claim 14 and further requires that the
separator is biaxially stretched. Appellants argue that, while Watanabe
teaches the separator is stretched, Watanabe fails to teach biaxial stretching.
Appeal Br. 12. Moreover, Appellants assert that “it is clear that a material
that is biaxially stretched is changed in structure and thus that it is ‘biaxially
stretched’ cannot be ignored. Reply Br. 7. Thus, Appellants contend that,
because the method of forming the separator affects the properties thereof,
the method is germane to the issue of patentability of the separator. Appeal
Br. 12.
The Examiner responds that the separator properties recited in the
claims are met by the combination of Watanabe and Ito. Ans. 9. Therefore,
though the method of stretching may affect the properties of the separator,
Appellants fail to show any difference in properties. Absent an identified
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difference in properties between that of the claimed separator and that of
Watanabe as modified in view of Ito, we are not persuaded of reversible
error in the Examiner’s rejection of claim 23.
Claim 25
Claim 25 recites a non-aqueous lithium secondary battery comprising
the separator of claim 14. Appellants argue that Watanabe fails to disclose a
lithium secondary battery where the electrolyte is a lithium salt. Appeal Br.
12. In addition, Appellants urge that the ordinary artisan could not have
predicted the improved cycle properties of such a battery when using a
separator having the Ra and Sm features as claimed. Id. at 13.
As the Examiner aptly notes, Appellants’ arguments do not address
the proposed combination of Watanabe and Ito as set forth in the rejection.
Ans. 9. As such, Appellants have not identified reversible error in the
rejection of claim 25.
Rejection 2: Obviousness over Watanabe, Ito, and Higuchi
Appellants argue that none of these references have a boiling point
pore diameter, dBP, of 0.001 to 0.1 pm. Appeal Br. 14. However, as the
Examiner notes, Appellants fail to address the Examiner’s finding that
Watanabe teaches a pore diameter of 0.01—1 pm, nor the Examiner’s
position that obviousness exists where the claimed range overlaps the range
disclosed in the prior art. Ans. 10. Further, Appellants fail to explain how
dBP differs, if at all, from Watanabe’s pore diameter. Indeed, Appellants
rebuttal that “a bubble [sic — boiling] point pore diameter [is not] necessarily
the same as simply a pore diameter” is equivocal and insufficient to show
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error in the Examiner’s findings. Accordingly, Appellants fail to identify
reversible error in the rejection of claims 20 and 24.
Rejection 3: Obviousness over Watanabe, Ito, and Masuda
Appellants do not argue with any particularity this rejection, merely
urging that Masuda does not remedy the deficiencies previously argued with
regard to the combination of Watanabe and Ito. Appellants’ unexplained
arguments provide no basis to reject the Examiner’s findings on those
points. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”); see also In reLovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (holding that “the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art”); see also Keller, 642 F.2d at 426.
Rejection 4: Obviousness over Watanabe, Ito, and Murata
Appellants argue that, because Murata is a multilayer porous
membrane and Watanabe is a single layer separator, the ordinary artisan
would not have added a filler to Watanabe’s separator absent improper
hindsight. Appeal Br. 16. This argument, however, does not address the
Examiner’s finding that Murata teaches inclusion of a filler in a porous
membrane for use as a battery separator can improve its heat resistance. See
Ans. 7 and 11—12. On this record, we are satisfied that the ordinary artisan
would have been motivated to add filler to Watanabe’s separator to improve
its heat resistance as taught by Murata.
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 14, 16—20, and
22—27 as unpatentable under 35 U.S.C. § 103(a) 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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