Tomohiro Sato et al.

Patent Trials and Appeals Board

Feb 26, 2020

15511872 - (D) (P.T.A.B. Feb. 26, 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.
15/511,872 03/16/2017 Tomohiro SATO 0081473-000028 2412
21839 7590 02/26/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
SIDDIQUEE, MUHAMMAD S
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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
following e-mail address(es):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte TOMOHIRO SATO and MASATOSHI KITO
____________
Appeal 2019-002055
Application 15/511,872
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1 and 3 over Lee ’586 (US
2014/0322586 A1; Oct. 30, 2014) with Yusuke (JP 2014/038974; Feb. 27,
2014) and of claims 2 and 4 over Lee ’082 (US 2013/0244082 A1; Sept. 19,
2013) with Yusuke.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Mitsubishi Paper Mills Limited as
the real party in interest (Appeal Br. 2).

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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 2 are representative and reproduced below (emphasis
added to highlight key disputed limitations):

1. A separator for an electrochemical device, comprising a
nonwoven fabric base material and an inorganic particle layer
that contains inorganic particles, wherein the nonwoven fabric
base material predominantly includes a synthetic resin fiber
with an average fiber diameter of 1 to 20 μm, the inorganic
particle layer includes an inorganic particle layer A that
contains magnesium hydroxide with an average particle size of
2.0 to 4.0 μm, and an inorganic particle layer B that contains
magnesium hydroxide with an average particle size of not less
than 0.5 μm and less than 2.0 μm, and the inorganic particle
layer A and the inorganic particle layer B are stacked in this
order on a surface of the nonwoven fabric base material.

2. A separator for an electrochemical device, comprising a
nonwoven fabric base material and an inorganic particle layer
that contains inorganic particles, wherein the nonwoven fabric
base material predominantly includes a synthetic resin fiber
with an average fiber diameter of 1 to 20 μm, the inorganic
particle layer includes an inorganic particle layer A that
contains magnesium hydroxide with an average particle size of
2.0 to 4.0 μm, and an inorganic particle layer B that contains
magnesium hydroxide with an average particle size of not less
than 0.5 μm and less than 2.0 μm, and the inorganic particle
layer A is disposed on a surface of the nonwoven fabric base
material, and the inorganic particle layer B is disposed on the
other surface of the nonwoven fabric base material.

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At the outset it is noted that Appellant’s arguments focus on the
limitations directed to the particle sizes of the particles A and B recited in
both independent claims 1 and 2 (Appeal Br. 5–8). Accordingly, the
dependent claims 3 and 4 stand or fall with their respective independent
claim.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant to identify the alleged error in the Examiner’s rejection).
We sustain the rejection for the reasons expressed by the Examiner in the
Final Office Action and the Answer.
We add the following primarily for emphasis.
It is well established that a prima facie case of obviousness exists
where the prior art and claimed ranges overlap, as well as in those cases
where the claimed range and the prior art range, though not overlapping, are
sufficiently close that one skilled in the art would have expected them to
have the same properties. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985). In fact, when, as here, the claimed ranges are completely
encompassed by the prior art, the conclusion of obviousness is even more
compelling than in cases of mere overlap. The normal desire of scientists or
artisans to improve upon what is already generally known provides
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motivation to determine where in disclosed set of ranges is the optimum
combination. Indeed, the law is replete with cases in which the difference
between the claimed invention and the prior art is the claimed range or other
variable within the claims. These cases have consistently held that the
Appellant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant’s main argument is that Lee ’586 and Lee ’082 do not
explicitly teach with sufficient specificity the recited narrow ranges set out
in the claims for the inorganic particles sizes (Appeal Br. 5, 8; Reply Br.
(contending that the Examiner first relied upon obviousness of ranges in the
Answer)). Contrary to this argument, the Examiner pointed out in the
Response to argument section of the Final Action that the claimed ranges of
particles sizes fall within the sizes taught in each of Lee ’586 and Lee ’082,
and further stated that a reference may be relied upon for all that it would
have reasonably suggested to one of ordinary skill (Final Action 2, citing
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (all
disclosures of a reference may be relied upon; a reference is not limited to its
examples or preferred embodiments). Notably, each rejection is based on
obviousness.
Appellant has also not adequately explained why the lower level of
“2.0 µm” recited in claim 1 for inorganic particle size of layer A is not so
close to the upper level of “less than 2.0 µm” for inorganic particle size of
layer B as recited in claims 1 and 2 so as to not encompass virtually identical
particle sizes for the inorganic particles in layers A and B (e.g., 1.99 µm is
less than 2.0).
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Appellant does contend that the present application recognizes a
specific purpose for the smaller ranges recited herein, stating that
comparative examples of the Specification show that if particle sizes in layer
B fall below 2.0 µm the particles will penetrate into the nonwoven fabric and
create undesirable pinholes (Appeal Br. 6). This, however, falls short of
Appellant presenting the requisite analysis of the data to establish evidence
of unexpected results due to the claimed particle size ranges.
Appellant has not provided the required side-by-side comparison of
the claimed invention with the closest prior art which is commensurate in
scope with the claims, and explained why the results would have been
unexpected by one of ordinary skill in the art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The evidence must show that the unexpected results
extend throughout the claimed subject matter but do not extend into the prior
art teachings that fall outside of the claimed subject matter, i.e., that the
claimed ranges are critical for obtaining the unexpected result. See, e.g., In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”); In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a
small number of) species gives unexpected results is inadequate proof, for ‘it
is the view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”’) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); and In re
Hill, 284 F.2d 955, 958–59 (CCPA 1960) (To establish unexpected results
over a claimed range, an applicant should compare a sufficient number of
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tests both inside and outside the claimed range to show the criticality of the
claimed range.).
Accordingly, a preponderance of the evidence supports the
Examiner’s obviousness determination and Appellant has not shown error in
the Examiner’s obviousness determination of the claimed ranges of particle
sizes over the applied prior art.
Moreover, it is well settled that it would have been obvious for an
artisan with ordinary skill to develop workable or even optimum ranges for
result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch,
617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA
1955).
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Lee ’586 teaches that
the inorganic particle size affects dispersibility of the particles in each layer,
and the thickness and porosity of each layer (Lee ’586 ¶ 33), and Lee ’082
similarly teaches particle size affects these properties (Lee ’082 ¶ 56).
Accordingly, substantial evidence supports the Examiner’s obviousness
determination of the particle sizes recited in claim 1, as well as in claim 2.
In light of these circumstances, we affirm the Examiner’s § 103
rejections of claims 1–4.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3 103 Lee ’586, Yusuke 1, 3
2, 4 103 Lee ’082, Yusuke 2, 4
Overall
Outcome
1–4

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