Hideaki Katayama et al.

Patent Trials and Appeals Board

Jan 2, 2020

11666921 - (D) (P.T.A.B. Jan. 2, 2020)

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.
11/666,921 05/03/2007 Hideaki Katayama 5271-0140PUS1 4596
127226 7590 01/02/2020
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
ARCIERO, ADAM A
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIDEAKI KATAYAMA, TOSHIHIRO ABE,
NOBUAKI MATSUMOTO, FUSAJI KITA, and SHIGEO AOYAMA

Appeal 2019-000124
Application 11/666,921
Technology Center 1700
____________

Before KAREN M. HASTINGS, RAE LYNN P. GUEST,
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 36–38 and 40–45. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed May 3, 2007 (“Spec.”),
the Final Office Action dated Sept. 12, 2017 (“Final Act.”), the Appeal Brief
filed Apr. 9, 2018 (“Appeal Br.”), and the Examiner’s Answer dated Aug. 2,
2018 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. MAXELL HOLDINGS LTD., is identified as the real party in
interest. Appeal Br. 1.
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Application 11/666,921

2

STATEMENT OF THE CASE
The invention relates to a separator for an electrochemical device,
such as a lithium secondary battery and a supercapacitor used as power
sources for portable equipment. Spec. ¶¶ 1, 2. The Specification describes
the separator comprising a porous base heat-resistant to temperatures of
150ºC or higher and further comprising filler particles for the purpose of
preventing an internal short-circuit to secure the shape stability of the
separator, especially at high temperature. Id. ¶¶ 20, 21.
Claims 36, 40, and 42, reproduced below, are illustrative of the
subject matter on appeal (disputed limitations italicized).
36. A porous base comprising inorganic filler particles
and having a heat-resistant temperature of not lower than 150
°C, the porous base being formed by integrating a number of
inorganic filler particles with a binder,
wherein a number average diameter of the inorganic filler
particles is in a range of 0.1 μm to 5 μm, and
the inorganic filler particles include plate-like boehmite
particles being stable with respect to nonaqueous electrolyte.
40. A separator for an electrochemical device,
comprising a porous film comprising a porous base and a resin,
wherein
the porous base is the porous base according to claim 36,
the resin includes at least one shutdown resin selected
from the group consisting of resin A that has a melting point in
a range of 80 °C to 130 °C, and resin B that absorbs an
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electrolyte and swells due to heating, and the swelling degree is
increased as the temperature rises, and
the separator for an electrochemical device has a
thickness of not more than 30 μm.
42. The separator for an electrochemical device
according to claim 40, wherein air permeability expressed as a
Gurley value is in a range of 10 to 300 (sec/100mL).
Appeal Br. (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
appealed rejections.
The Examiner rejects claims 36–38 and 40–45 as follows. Final Act.
3–7.

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Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
36–38, 40, 45 103(a) Bauer,3 Kido4
41 103(a) Bauer, Kido, Tsukuda5
42 103(a) Bauer, Kido, Wensley6
43 103(a) Bauer, Kido, Doi7
44 103(a) Bauer, Kido, Abe8

Appellant separately argues the rejections of claims 36 and 42 and
relies on the dependency of claims 41, 43, and 44 from claim 36. Appeal Br.
6–11. Therefore, in view of the lack of arguments directed to claims 37, 38,
40, and 45, the claims stand or fall with claim 36. 37 C.F.R.
§ 41.37(c)(1)(iv). We consider the arguments advanced by Appellant in
support of patentability of claim 36 to the extent applicable to the separate
rejections of claims 41, 43, and 44. We separately address claims 36 and 42
below.
Claim 36
Appellant contends that the Examiner erred in rejecting claim 36 over
the combined teachings of Bauer and Kido because Bauer requires the solids
in its separator to be electrochemically inert in the electrolyte and Kido’s
plate boehmite particles have high catalytic activity. Appeal Br. 6–7.
According to Appellant, it therefore would not be obvious that the alumina
particles of Bauer are replaced by the boehmite particles of Kido. Id. at 7.

3 US 6,632,561 B1, issued Oct. 14, 2003.
4 US 6,403,007 B1, issued June 11, 2002.
5 US 6,511,774 B1, issued Jan. 28, 2003.
6 US 6,881,515 B2, issued Apr. 19, 2005.
7 GB 2 097 637 A, published Feb. 27, 1980.
8 US 2006/0246356 A1, published Nov. 2, 2006.
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Appellant also asserts that Kido discloses a reaction of phase transformation
from boehmite to alumina at around 500ºC producing water. Id. at 7–8.
Appellant argues that because water needs to be prevented from entering
Bauer’s battery as much as possible, it would not have been obvious to
combine Kido and Bauer since Kido requires a reaction that produces water
to impart flame retardance to plastics. Id. at 8. Appellant also contends that
Kido does not relate to a nonaqueous electrolyte, therefore the combination
with Bauer cannot lead to a porous base comprising inorganic filler particles
with “the inorganic filler particles . . . being stable with respect to
nonaqueous electrolyte” as recited in claim 36. Id.
The Examiner responds that Kido recognizes that boehmite and
alumina are substitutable for use as a filler in separating membranes and
does not require the plate boehmite always to be converted to plate alumina.
Ans. 9 (citing Kido 1:6–14, 5:25–30). The Examiner finds that Bauer does
not disclose any processing temperatures that reach 500ºC. Id. The Examiner
also responds that claim 36 does not require a nonaqueous electrolyte. Id.
The Examiner finds that Bauer discloses a separator comprising alumina as a
filler for providing a separator with improved mechanical strength and
dimensional stability at high temperature and Kido is relied upon for
teaching that boehmite and plate alumina are substitutable in separating
membranes. Id. at 10.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 36 as obvious over the teachings of Bauer
and Kido. Specifically, we are not persuaded that the Examiner erred in
finding that Kido teaches boehmite is a suitable substitute as a flame-
retardant filler. The record supports the Examiner’s finding. Kido 1:7–8;
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Ans. 9–10. Appellant’s argument (Appeal Br. 7–8) that Kido requires an
endothermic reaction to convert boehmite to a plate alumina to make it
suitable as a flame-retarding filler is not persuasive because the argument is
based on a specific embodiment disclosed by Kido rather than Kido’s
general teaching that boehmite and alumina are both suitable fillers. “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference. . . .
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
413, 425 (CCPA 1981). Because Kido discloses that both boehmite and
alumina are suitable fillers, and that boehmite is a raw material of alumina,
the Examiner’s finding that Kido discloses but does not require that alumina
be obtained by calcining the plate boehmite is both reasonable and supported
by the record. Ans. 9; Kido 1:7–8, 1:59–60.
Appellant’s argument (Appeal Br. 8) that Kido’s reaction produces
water while Bauer’s lithium ion battery requires preventing water from
entering the battery is not persuasive because it is based on the same
argument that Kido requires transformation from boehmite to alumina. In a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the [prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”). In addition, Appellant does
not dispute the Examiner’s finding (Ans. 9) that Bauer does not disclose any
processing temperatures that reach 500ºC for such a reaction to occur.
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The preponderance of the evidence in this appeal record therefore
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Bauer and Kido. Accordingly, we affirm the
Examiner’s rejection of claim 36 as well as claims 37, 38, 40, and 45 under
35 U.S.C. § 103(a) over Bauer and Kido for the above reasons and those
provided by the Examiner.
Claims 41, 43, 44
Claims 41, 43, and 44 each depend from claim 40. Claim 40 is
directed to a separator for an electrochemical device comprising, inter alia, a
porous base according to claim 36. Appeal Br. (Claims Appendix). The
Examiner rejects claims 41, 43, and 44 over the combination of Bauer and
Kido and additionally relies on Tsukuda, Doi, and Abe, respectively, for the
additional recitations in the dependent claims. Final Act. 5–7. Because we
find Appellant’s arguments unpersuasive of error in the Examiner’s
combination of Bauer and Kido for the reasons discussed above, we likewise
affirm the Examiner’s rejection of claims 41, 43, and 44 for the same
reasons.

Claim 42
Appellant contends that the Examiner erred in rejecting claim 42
because Wensley does not disclose the Gurley values of its coating 14 and
the entire separator. Appeal Br. 10. According to Appellant, because
Wensley’s coating 14 does not contain a solid like Bauer’s first layer, it is
not porous, thus the Gurley values of coating 14 and the entire separator are
much larger than the upper range recited in claim 42 (300 sec/100 cc). Id.
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The Examiner responds that Wensley teaches a membrane for a
separator that has an air permeability Gurley value of no more than 300
sec/100 cc. Ans. 10 (citing Wensley 3:25–27). The Examiner also finds that
Wensley teaches that the coating on the membrane does not fill the pores. Id.
(citing Wensley 2:29–34). The Examiner concludes that Wensley will have
an air permeability Gurley value of no more than 300 sec/100 cc for such a
membrane for a separator as requested by claim 42. Id. The Examiner
provides Yoo as further evidence that a porous separator membrane that
comprises a coating that does not fill the pores of the porous membrane
provides a separator with an air permeability of less than 300 sec/100 cc. Id.
(citing Yoo 3:39–44, 4:40–54, 12:42–44 (Example 1)).
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 42 over the cited prior art references. The
cited record in this Appeal supports each of the Examiner’s findings
regarding the Gurley value for a porous separator. Appellant does not
dispute the Examiner’s evidence that the air permeability value required by
claim 42 would be met by a separator that also contains particles. Yoo 3:39–
44; Ans. 10.
Accordingly, we affirm the Examiner’s rejection of claim 42 under 35
U.S.C. § 103(a).
CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 36–38 and 40–45 under 35 U.S.C. § 103(a)
as obvious over the cited prior art references.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
36–38, 40, 45 103(a) Bauer, Kido 36–38, 40, 45
41 103(a) Bauer, Kido, Tsukuda 41
42 103(a) Bauer, Kido, Wensley 42
43 103(a) Bauer, Kido, Doi 43
44 103(a) Bauer, Kido, Abe 44
Overall
Outcome
36–38, 40–45

TIME PERIOD FOR RESPONSE
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