Ex Parte Yun et al

Patent Trial and Appeal Board

Aug 18, 2016

12180509 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/180,509 07/25/2008
23906 7590 08/22/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Kyung Suk Yun
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TK5260-US-PCD 1169
EXAMINER
PATEL, VISHAL I
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYUNG SUK YUN, BYUNG WON CHO,
SEONG-MU JO, WHA SEOP LEE, WON IL CHO,
KUN YOU PARK, HYUNG SUN KIM, UN SEOK KIM,
SEOK KU KO, SUK WON CHUN, and SUNG WON CHOI
Appeal2015-001536
Application 12/180,509
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 25-37. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to a fabrication method of a
hybrid polymer electrolyte. Spec. 1, 11. 6-7. Claim 25, reproduced below,
1 Appellants identify the real party in interest as Korea Institute of Science
and Technology. Appeal Brief filed May 22, 2014 ("App. Br."), 1.
2 Final Office Action mailed April 26, 2013 ("Final Act.").
Appeal2015-001536
Application 12/180,509
with minor formatting changes for readability, is illustrative of the claims on
appeal.
25. A fabrication method of a hybrid polymer electrolyte,
compnsmg:
obtaining a polymeric solution by dissolving a first
polymer in an organic solvent, the first polymer being able to be
formed into polymer fibers;
generating a porous polymer matrix comprising the
polymer fibers entangled with each other by filling the polymeric
solution into an electrospinning apparatus and discharging the
polymeric solution onto a substrate comprising a metal plate,
polyester film, plastic sheet, or electrodes through a nozzle
charged with a high voltage; and
injecting a polymer-electrolyte comprising a second
polymer and an organic electrolyte solution, wherein a lithium
salt is dissolved in the organic electrolyte solution, into the
porous polymer matrix to incorporate the polymer-electrolyte
into the porous polymer matrix.
REJECTIONS ON APPEAL
1. Claims 25-32, 36, and 37 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gies et al. (US 5,665,265, issued
Sept. 9, 1997) (hereinafter "Gies") in view of Gozdz et al.
(US 5,460,904, issued Oct. 24, 1995) (hereinafter "Gozdz") and
further in view of Ko et al. (US 7,264,762 B2, issued
Sept. 4, 2007) (hereinafter "Ko"); and
2. Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gies in view of Gozdz and Ko, and further in
view of Yun et al. (US 6,355,380 Bl, issued Mar. 12, 2002)
(hereinafter "Yun").
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ANALYSIS
Appellants' substantive arguments for patentability are based on
limitations recited in claim 25, including separately rejected claims 33-35.
All claims therefore stand or fall with claim 25. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
The Examiner finds that Gies teaches a method of forming a non-
woven porous polymeric fabric material (3: 13-16, 19-27), introducing a
gelling polymer into the non-woven porous polymeric fabric material by dip
coating ( 4:42--45; Ex. I), and then swelling the gelling polymer with an
electrolyte active species (3:44--46, 4:42--45; Ex. 1). Final Act. 2-3. The
Examiner acknowledges that Gies teaches dip coating the porous polymer
matrix rather than injecting solution into the porous first polymer matrix, as
in claim 25. Id.
The Examiner finds that Gozdz teaches injecting as an alternative
method for introducing an electrolyte solution into a porous polymer matrix.
Ans. 8; see also Gozdz 10:20--43; Examples 15-16 (teaching that dip
coating (immersion) and injecting are different methods of introducing a
polymer-electrolyte into a porous polymer matrix). The Examiner
determines that it would have been obvious to inject a polymer-electrolyte
solution, as taught by Gozdz, into Gies' porous polymer matrix because
injecting the solution, unlike dip coating, would give a user more control
over how much solution to introduce into the porous polymer matrix.
Ans. 8. The Examiner acknowledges that Gies and Gozdz do not teach
generating a polymer matrix comprising polymer fibers using an
elecrtrospinning apparatus, but finds that such an electrospinning process
was well known in the art, as evidenced by Ko. Final Act. 3.
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Appellants argue that Gies and Gozdz are in a different field of
endeavor than Ko and thus one skilled in the art would not have made the
Examiner's proposed combination without the benefit of hindsight. App.
Br. 4.
"Two criteria have evolved for determining whether prior art is
analogous: ( 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 Clay,
966 F.2d 656, 658-59 (Fed. Cir. 1992). "A reference is reasonably pertinent
if, even though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem." Clay, 966 F .2d at 659. "References are selected
as being reasonably pertinent to the problem based on the judgment of a
person having ordinary skill in the art." In re Kahn, 441 F.3d 977, 986-87
(Fed. Cir. 2006).
Even if Gies and Gozdz are in a different field of endeavor than Ko,
Ko is analogous art if it is reasonably pertinent to the particular problem
with which the inventor was involved. An object of Appellants' invention is
to provide a simple process for fabricating a polymer electrolyte having a
porous polymer matrix of superfine polymer fibers (1 nm-3000 nm) with a
polymer electrolyte incorporated into the porous polymer matrix. Spec. 4--5;
see also Spec. 22 (teaching a conventional method for fabricating a gel-
polymer electrolyte where a polymeric solution was cast by die-casting to
produce a polymer electrolyte film). Ko is directed to a new method for
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preparing conducting polymer fibers with submicron diameters by
electrospinning, instead of casting, conducting polymer blends to form a
film. Ko 1: 16-23. Although Ko teaches its polymer fibers can be used in
electronic devices such as Schottky junctions, sensors, and actuators (see,
e.g., Ko 1 :23-26), it provides evidence that electrospinning was known
(since the 1930s) as an simple and low cost method of fabricating long,
meter-length, organic polymer fibers directly into a non-woven mesh
(matrix) of nano and micron fibers (approximately 40 nm to 2 µm, in linear,
2-D and 3-D architecture). Ko 2:36-53. Further, Ko teaches that its
fabrication method and the conducting fibers produced via this method are
not limited to use in electronic devices. Id. at 1 :23-26. Thus, one of
ordinary skill in the art seeking to simplify a method for making a polymer
electrolyte that includes a matrix of superfine polymer fibers would search
for a simple and low cost method for directly forming the polymer fibers
into a matrix such as the electrospinning method disclosed in Ko. Thus, Ko
"logically would have commended itself' to the inventor's attention,
especially when such electrospinning method taught by Ko is viewed from
the perspective of one of ordinary skill in the art interested in making
polymer fibers useful for forming a non-woven porous polymeric fabric
material of the type recited in the claims. Clay, 966 F.2d at 659; Kahn, 441
F.3d at 986-87. Indeed, Appellants do not argue that Ko is not reasonably
pertinent to the problem with which the inventor was concerned from the
perspective of a person having ordinary skill in the art. See generally App.
Br.
Appellants next argue that even if Gies, Gozdz, and Ko were within
the same field of endeavor, the combination of the Gies patent and the Ko
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patent would render the Gies' device unsuitable for its intended purpose.
App. Br. 5---6. This argument is not persuasive. As the Examiner points out,
the rejection is not suggesting adding Ko's conductive fibers to Gies'
battery. Rather, Ko is cited as evidence that electrospinning was known as a
simple method of directly fabricating organic polymer fibers into a
non woven matrix of superfine fibers with high surface area. Ko 1: 16-23,
2:36-53. As indicated by the Examiner, the collective teachings of Gies,
Gozdz, and Ko would have suggested using the electrospinning method
taught by Ko to make polymer fibers useful for forming Gies' non-woven
porous polymeric fabric that can be injected with polymer electrolyte.
Ans. 3--4.
Appellants argue that Gies fails to teach or suggest a polymer-
electrolyte as recited in claim 25. App. Br. 6-7. Specifically, Appellants
argue that Gies forms a gel polymer electrolyte that comprises two distinct
polymers in two distinct phases (non-woven polymeric host matrix" and a
"gelling polymer") not a polymer electrolyte with a three-dimensional
network structure. Id. at 6. Appellants further argue that Gozdz does not
cure the deficiency of Gies, and it would be improper to combine the
references because substituting Gozdz's method of injecting a polymer-
electrolyte into the porous polymer matrix for Gies' dip coating method
would require substantial reformulation of Gies' method. Id. at 6-7.
Appellants' arguments are not persuasive. First, claim 25 does not recite
that the hybrid polymer electrolyte has a three-dimensional network
structure. Thus, Appellants are arguing limitations not recited in the claim.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail
from the outset because ... they are not based on limitations appearing in
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the claims.") Further, the Examiner finds that Gies' method as modified by
Gozdz and Ko teaches or would have suggested Appellants' method of
making a polymer-electrolyte (Final Act. 3; see also Ans. 7-8). See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references."). Any redesign or reformulation of Gies
that would be necessary to inject both the polymer and electrolyte into the
polymer matrix would have been readily appreciated by one of ordinary skill
in the art combining the teachings of Gies and Gozdz.
Appellants argue that the Examiner's reason for substituting Gozdz's
injection method for Gies' dip coating method is based on common
knowledge, without evidentiary support. App. Br. 7-8. The Examiner finds,
and Appellants do not dispute, that dip coating and injecting are alternative
methods for introducing solution into a porous polymer matrix. App. Br. 6.
The Examiner's finding is supported by Gozdz. See 3:47-53, 10:33--43
(Example 16). Where two known alternatives are interchangeable for a
desired function, an express suggestion to substitute one for the other is not
needed to render a substitution obvious. In re Fout, 675 F.2d 297, 301
(CCPA 1982); see also In re Mayne, 104F.3d1339, 1340 (Fed. Cir. 1997)
("Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].").
Thus, on this record, Appellants have not adequately explained why one
skilled in the art, using no more than ordinary creativity, would not have
substituted Gozdz's injection method for Gies' dip coating method to
introduce the polymer electrolyte solution into the porous polymer matrix.
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DECISION
For the above reasons, the Examiner's rejections of claims 25-37 are
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).
AFFIRMED
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