Lim, Soo Hyun. et al.

Patent Trials and Appeals Board

Oct 25, 2019

14459453 - (D) (P.T.A.B. Oct. 25, 2019)

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.
14/459,453 08/14/2014 Soo Hyun Lim LGCHEM
3.9-525 CON (E)
2657
86765 7590 10/25/2019
LGCHEM
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
600 South Avenue West
Westfield, NJ 07090
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOO HYUN LIM, MIN HEE LEE, JAE HYUN LEE,
SEONG MIN LEE, JIHYUN KIM, and TAE JIN PARK
Appeal 2019-001006
Application 14/459,453
Technology Center 1700
Before MONTÉ T. SQUIRE, BRIAN D. RANGE, and JANE E. INGLESE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–9, 16, 18, 20–24, and 28–32.2,3
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant describes the invention as relating to an electrode assembly
and secondary battery including a cathode and anode of different shapes.
Spec. ¶ 2. In particular, the Specification explains that certain cathode and
anode shapes can solve certain problems related to lithium batteries and
achieve “desired effects.” Id. ¶¶ 2–12, 23. For example, the different
shaped cathodes can prevent the position of the anode and cathode being
confused during module assembly or wiring. Id. ¶ 9. Claim 1 is illustrative:
1. An electrode assembly comprising:
a plurality of alternately arranged cathode plates and
anode plates;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as LG CHEM,
LTD. Appeal Br. 2.
2 In this Decision, we refer to the Non-Final Office Action dated December
28, 2017 (“Non-Final Act.”), the Appeal Brief filed June 11, 2018 (“Appeal
Br.”), the Examiner’s Answer dated September 18, 2018 (“Ans.”), and the
Reply Brief filed November 16, 2018 (“Reply Br.”).
3 Appellant does not reference all of these claims in its statement of the
grounds of rejection to be reviewed on appeal. Appeal Br. 4. We
understand, nonetheless, that Appellant appeals the rejection of each of these
claims because Appellant included these claims in its Claims Appendix.
Also, the Examiner understood that these claims are on appeal because the
Examiner references them in the rejection summary. Ans. 3–4.
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a separator disposed between a one of the cathode plates
and a one of the anode plates;
a plurality of cathode tabs respectively formed on the
cathode plates;
a plurality of anode tabs respectively formed on the
anode plates;
a cathode lead coupled to the cathode tabs; and
an anode lead coupled to the anode tabs,
wherein the cathode tabs and the anode tabs have
different shapes and widths of the cathode tabs and the anode
tabs are equal to 2 to 100% a length of electrode surfaces with
the tabs formed thereon;
wherein the cathode lead and the anode lead have
different shapes, and are respectively welded to the plurality of
cathode tabs and the plurality of anode tabs; and
wherein at least one of the cathode and anode tabs has a
shape that is symmetric with respect to a longitudinal axis, the
shape including a continuous first edge having a first length
adjacent a respective plate and a continuous second edge having
a second length disposed parallel to the continuous first edge
and farther from the respective plate, and a gradually-increasing
width from the first edge to the second edge, the second length
being greater than the first length
wherein the cathode plates comprise a cathode active
material and a current collector made of aluminum, and the
anode plates comprise an anode active material and a current
collector made of aluminum,
wherein materials of the cathode tabs, anode tabs, the
cathode leads and anode leads are aluminum, respectively,
wherein the anode plate comprises, as an anode active material,
lithium titanium oxide (LTO) represented by LiaTibO4, where
0.5≤a≤3 and 1≤b≤2.5.
Appeal Br. 13 (Claims App.) (emphases added to certain key recitations).

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
O’Connell
Hong
Kumeuchi et al.
(“Kumeuchi”)
Schmidt et al.
(“Schmidt”)
Daidoji et al.
(“Daidoji”)
Watanabe et al.
(“Watanabe”)
Shimamura et al.
(“Shimamura”)
Sun et al.
(“Sun”)
Han et al.
(“Han”)
Takeuchi et al.
(“Takeuchi”)
Tsukamoto

US 2002/0146620 A1
US 2003/0232243 A1
US 2007/0190402 A1

US 2008/0044728 A1

US 2008/0060189 A1

US 2008/0070102 A1

US 2008/0118826 A1

US 2008/0219911 A1

US 2011/0143180 A1

JP 2001-243952 A

JP 2012-14935 A
Oct. 10, 2002
Dec. 18, 2003
Aug. 16, 2007

Feb. 21, 2008

Mar. 13, 2008

Mar. 20, 2008

May 22, 2008

Sept. 11, 2008

June 16, 2011

Sept. 7, 2001

Jan. 19, 2012

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1, 2, 4–9, 16, and 29–31 under 35 U.S.C. § 103 as obvious
over Daidoji in view of Watanabe, Kumeuchi, Han, Tsukamoto,
O’Connell, and Takeuchi. Non-Final Act. 3.
B. Claim 18 under 35 U.S.C. § 103 as obvious over Daidoji in view of
Watanabe, Kumeuchi, Han, Tsukamoto, O’Connell, and Takeuchi
further in view of Shimamura. Id. at 11.
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C. Claims 20 and 21 under 35 U.S.C. § 103 as obvious over Daidoji in
view of Watanabe, Kumeuchi, Han, Tsukamoto, O’Connell, and
Takeuchi further in view of Hong. Id.
D. Claims 22–24 under 35 U.S.C. § 103 as obvious over Daidoji in view
of Watanabe, Kumeuchi, Han, Tsukamoto, O’Connell, and Takeuchi
further in view of Sun. Id. at 12.
E. Claim 28 under 35 U.S.C. § 103 as obvious over Daidoji in view of
Watanabe, Kumeuchi, Han, Tsukamoto, O’Connell, and Takeuchi
further in view of Schmidt. Id. at 13.
F. Claim 32 under 35 U.S.C. § 103 as obvious over Daidoji in view of
Watanabe, Han, Tsukamoto, O’Connell, and Takeuchi. Id.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant 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 evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues all rejections together and does not present any
substantively distinct arguments for any claims. See Appeal Br. 4–11.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv)
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(2013), we limit our discussion to claim 1, and all other claims on appeal
stand or fall together with claim 1.
The Examiner rejects claim 1 as obvious over Daidoji in view of
Watanabe, Kumeuchi, Han, Tsukamoto, O’Connell, and Takeuchi. Non-
Final Act. 3. The Examiner finds that Daidoji teaches, for example, cathode
and anode plates, a separator, cathode and anode tabs formed on respective
plates, and cathode and anode leads. Id. at 3–4 (citing Daidoji). The
Examiner finds that Daidoji lacks various other aspects of claim 1 but
determines it would have been obvious to modify Daidoji according to the
teachings of the cited secondary references. Id. at 4–9.
In particular, the Examiner:
(1) finds that Watanabe discloses cathode tabs and anode tabs of different
shapes that “are capable of being easily welded at different positions” and
determines that it would have been obvious to modify Daidoji to have
different tab shapes in order to “easily perform a welding operation at
different positions” (Id. at 4–5 (citing Watanabe));
(2) finds that Kumeuchi discloses cathode and anode tabs with widths
within claim 1’s recited range and determines it would have been obvious to
choose a tab width for Daidoji in order to improve battery performance (id.
at 5–6 (citing Kumeuchi));
(3) finds that Han teaches different cathode and anode shapes “in order to
avoid various problems caused by possible failure to identify [cathodes and
anode sides] of the battery unity module” and determines it would have been
obvious to employ different cathode and anode shapes with Daijodi in order
to avoid this same problem (id. at 6–7 (citing Han));
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(4) finds that Tsukamoto teaches a positive electrode tab “substantially
identical” in shape to the shape recited by claim 1 (effectively a wedge shape
(see Spec. Fig. 1)) and determines that it would have been obvious to
employ such a tab with Daidoji in order to “simplify the production line and
to prevent the scum from adhering as impurities after forming the electrode
plate” and to improve battery quality (Non-Final Act. 7–8 (citing
Tsukamoto));
(5) finds that O’Connell discloses that all cathode and anode collectors,
tabs, and leads can be made of aluminum and determines that it would have
been obvious to choose aluminum as Daidoji’s cathode and anode active
materials because aluminum was known to be suitable for this purpose (id. at
8–9 (citing O’Connell); and
(6) finds that Takeuchi teaches use of lithium titanium oxide (LTO) as
recited in claim 1 may be used as an anode active material and determines
that it would have been obvious to modify Daidoji to include Takeuchi’s
LTO to achieve “excellent high temperature cycle characteristics and high
temperature storage characteristics” (id. at 9 (citing Takeuchi).
Appellant’s primary argument is that the cited art does not recognize a
problem solved by the inventors—namely that aluminum foil and LTO
coated aluminum foil are difficult to distinguish with the naked eye and that
having leads and tabs of different shapes can ensure an appropriate
connection. Appeal Br. 5–7. Appellant argues that because the prior art
does not recognize this problem, combining the references’ teachings is an
improper hindsight-guided combination of elements. Id. at 7–9.
Appellant’s argument is not persuasive because, as explained by the
Examiner, “why or how the Appellant invents the claimed invention” should
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not be our focus. Ans. 5 (emphasis omitted). Indeed, the Supreme Court, in
its seminal KSR decision, held that the Court of Appeals erred by “fail[ing]
to recognize that the problem motivating the patentee may be only one of
many addressed by the patent’s subject matter.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Thus, “[u]nder the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. (emphasis added); see also Ex Parte Obiaya, 227
USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”); Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in
the art need not see the identical problem addressed in a prior art reference
to be motivated to apply its teachings.”).
Here, as explained above, the Examiner provided cogent rationales
supported by a preponderance of the evidence as to why a person of ordinary
skill in the art would have been inclined to combine the teachings of each of
the cited references. Ans. 5–6; Non-Final Act. 4–9. Appellant does not
persuasively dispute the Examiner’s findings and does not persuasively
argue that the Examiner’s stated rationales for combining the references lack
merit. The fact that the Examiner’s rationales to combine are not the same
as Appellant’s rationale does not constitute error in the Examiner’s analysis.
Appellant emphasizes Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346,
1357 (Fed. Cir. 2013). Reply Br. 4–5. That precedent, however, is
distinguishable. There, the inventors of the patent at issue recognized and
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solved a problem relating to the storage of Vitamin D combined with a
corticosteroid. Leo Pharm. Prods., 726 F.3d at 1353–54. The prior art
either discouraged such a combination or attempted the combination without
recognizing the storage stability problem. Id. at 1353. Thus, the facts
established a “lack of expectation of a successful result” and “failure of the
prior art to provide direction.” Id. at 1357. Our reviewing court reversed the
Board’s obviousness determination because its rationale that “one of
ordinary skill would have used vitamin D to solve the well-known side
effects of steroid treatment” was inadequate to support the combining of the
references’ teachings under the facts and circumstances in that case. Id. at
1355. In contrast to the facts of Leo Pharm. Prods., the record here includes
no evidence that one of ordinary skill in the art would have been discouraged
from making the Examiner’s proposed combination. Appellant also does not
argue that success in combining the art’s teachings would not have been
expected.
Although not strictly necessary to sustain the Examiner’s rejection, we
also agree with the Examiner that the cited art appreciates solutions to the
problem of difficulty in distinguishing anodes and cathodes. Ans. 5–6. In
particular, Han recognizes the problem of battery terminals being improperly
connected and thus teaches asymmetrically formed battery terminals to
ensure that improper connections are not possible. Han ¶ 49; see also Non-
Final Act. 6–7. Also, as the Examiner explains, Watanabe teaches
differently shaped electrode tabs. Ans. 5–6 (citing Watanabe Figs. 4, 13–16,
¶¶ 74, 108, 195). While we agree with Appellant (Reply Br. 5–7) that
Watanabe uses different shaped tabs primarily to allow welding connections
(Watanabe ¶ 108 (“By combining any of the shapes shown in these Figures,
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electrode tabs are capable of being welded at different positions.”)), the
result is the same: Watanabe’s anode tab shape and different cathode tab
shape ensure that the tabs are not confused during assembly.
Appellant also argues that none of the cited references “hint or
suggest that an LTO be used as an anode active material by coating onto an
Al [aluminum] foil and that materials of all constitutions comprise
aluminum.” Appeal Br. 9–10. Claim 1, however, does not require LTO
coated on aluminum foil. Moreover, Appellant does not persuasively
dispute the Examiner’s stated reason as to why a person of skill in the art
would have used aluminum and LTO for the battery components.
Finally, the Examiner’s Answer states that Appellant “appears to state
the super[ior] results or unexpected results of the present invention.” Ans.
10. We do not understand Appellant’s Appeal Brief as raising any
arguments with respect to secondary considerations such as unexpected
results, so we do not address such considerations here.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejections.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–9, 16,
29–31
103 Daidoji, Watanabe,
Kumeuchi, Han,
Tsukamoto, O’Connell,
Takeuchi
1, 2, 4–9,
16, 29–31

18 103 Daidoji, Watanabe,
Kumeuchi, Han,
18
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Tsukamoto, O’Connell,
Takeuchi, Shimamura
20, 21 103 Daidoji, Watanabe,
Kumeuchi, Han,
Tsukamoto, O’Connell,
Takeuchi, Hong
20, 21
22–24 103 Daidoji, Watanabe,
Kumeuchi, Han,
Tsukamoto, O’Connell,
Takeuchi, Sun
22–24
28 103 Daidoji, Watanabe,
Kumeuchi, Han,
Tsukamoto, O’Connell,
Takeuchi, Schmidt
28
32 103 Daidoji, Watanabe,
Han, Tsukamoto,
O’Connell, Takeuchi
32
Overall
Outcome
1, 2, 4–9,
16, 18, 20–
24, 28–32

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED