Ex Parte 6251537 et al

Board of Patent Appeals and Interferences

Jun 30, 2010

90006572 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAMSUNG DISPLAY DEVICES CO., LTD.,
Patent Owner and Appellant
____________

Appeal 2008-005992
Reexamination Control 90/006,572
Patent 6,251,537 B1
Technology Center 3900
____________

Decided: June 30, 2010
____________

Before TERRY J. OWENS, CAROL A. SPIEGEL, and ROMULO H.
DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Samsung Display Devices Co., Ltd. (hereinafter “Appellant”)1 appeals
under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-64, 78,
81, 82, 84, 94, 96, 108, and 109 (Examiner’s Answer mailed October 6,
2005, hereinafter “Ans.,” 2; Appeal Brief filed July 12, 2005, hereinafter

1 See Patent Assignment Abstract of Title, entered into the electronic file on
April 8, 2003, for the subject patent (hereinafter the ‘537 Patent), which
issued to Han-sung Kim, Whan-jin Roh, and Hyung-gon Noh on June 26,
2001 from Application 09/265,358 filed on March 10, 1999.
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“App. Br.,” 2; Final Office Action mailed January 14, 2005). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
On March 25, 2003, Appellant filed a Request for Ex Parte
Reexamination, citing Japanese Patent Publications 9-265967, 9-288996, 9-
288998, 9-283101, 9-283100, 9-274896, and 9-288997, and United States
Patents 6,001,505 and 6,004,693. On May 28, 2003, the Examiner (acting
pursuant to the delegated authority of the Director of the United States
Patent and Trademark Office (USPTO) under 35 U.S.C. § 303(a)) ordered
reexamination based on a determination that at least some of Appellant’s
cited printed publications raise a substantial new question of patentability
and that “WO 97/08762, which was considered by the [E]xaminer during
[the original] prosecution, has been viewed in a new light and presents a
substantial new question of patentability” (Order Granting Reexamination
mailed May 28, 2003 at 2-3). Appellant immediately took issue with the
Examiner’s determination that WO 97/08762 raised a substantial new
question of patentability (Patent Owner’s Statement under 37 C.F.R. § 1.530
filed on July 21, 2003). During reexamination, the Examiner applied WO
97/08762 but not the publications cited in the Request for Ex Parte
Reexamination (Office Action mailed November 6, 2003 and Final Office
Action mailed January 14, 2005). Appellant continued to object to the
application of WO 97/08762 (See, e.g., Amendment filed on January 5, 2005
at 37-40). This appeal ensued.
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We heard oral arguments on May 6, 2009, a written transcript of
which may be found in the electronic file.
The ‘537 Patent states that the invention “relates to a secondary
battery...having an improved seal structure between electrode tabs acting as
terminals of the battery and a case, thereby preventing leakage of
electrolyte” (col. 1, ll. 7-12).
Originally issued claim 1 and added claims 22, 23, 30, 33, 78, and 81,
which are representative of the claims on appeal, read as follows:
1. A secondary battery, comprising:
a battery body having a positive electrode, a negative
electrode and a separator which are stacked, and electrode tabs
for inducing current generated therein to the outside;
a dielectric package having upper and lower dielectric
packages for enclosing the battery body by sealing edge
portions of the upper and lower dielectric packages while the
electrode tabs are partially exposed to the outside; and
sealing materials coated on portions of the electrode tabs
contacted with edge portions of the upper and lower dielectric
packages, wherein said sealing materials have side arms
extended in parallel with the edge portions of the upper and
lower dielectric packages for preventing leakage of an organic
liquid electrolyte while being interposed and fused between the
edge portions of the upper and lower dielectric packages.

22. The secondary battery of claim 1, wherein the
sealing materials are fused according to the following process:
coating the sealing materials including the side arms on
the electrode tabs so as to form side arms having a thickness of
at least a thickness of the corresponding electrode tabs;
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disposing the electrode tabs such that the sealing
materials including the side arms are between edge portions of
the upper and lower dielectric packages; and
applying heat and pressure to the dielectric package such
that the edge portions of the upper and lower dielectric
packages are sealed and the sealing materials including the side
arms are fused to the edge portions of the upper and lower
dielectric packages such that the organic liquid electrolyte
cannot leak from the dielectric package past the electrode tabs
and the side arms.

23. The secondary battery of claim 22, wherein the
coating the sealing materials comprises coating the sealing
materials such that a thickness of the sealing materials on the
electrode tabs is less than the thickness of the side arms.

30. The secondary battery of claim 1, wherein the
dielectric package comprises a pre-shaped package forming a
cavity to house the positive electrode, the negative electrode,
the separator, and the organic liquid electrolyte, and the cavity
has a same shape before and after the positive electrode, the
negative electrode, the separator, and the organic liquid
electrolyte are housed in the cavity of the dielectric package.

33. The secondary battery of claim 1, further comprising
an electrolyte comprising the organic liquid electrolyte and
which is disposed in the dielectric package.

78. A secondary battery, comprising:
a battery body having a positive electrode, a negative
electrode and a separator which are stacked, and electrode tabs
for inducing current generated therein to the outside;
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a dielectric package having upper and lower dielectric
packages for enclosing the battery body by sealing edge
portions of the upper and lower dielectric packages while the
electrode tabs are partially exposed to the outside;
an electrolyte comprising an organic liquid electrolyte
disposed in the dielectric package; and
sealing materials coated on portions of the electrode tabs
contacted with edge portions of the upper and lower dielectric
packages, wherein:
each of the sealing materials has side arms extending to
and terminating at corresponding connection points between the
upper and lower edges portions to completely fill corresponding
gaps between the corresponding tab and the connection points
so as to prevent the organic liquid electrolyte from leaking
through gaps during operation of the battery,
the upper and lower edges portions connect at the
connection points, and
each of the sealing materials has a shape in which, prior
to sealing, a thickness of the side arms extending from the
corresponding tab is greater than a sum of thicknesses of
portions of the sealing materials on the corresponding electrode
tab to be disposed between the edges of the upper and lower
dielectric packages and the electrode tab.

81. The secondary battery of claim 78, wherein the
sealing materials have a shape in which, prior to sealing, the
thicknesses of the side arms extending from the corresponding
tab is greater than a thickness of the tab.
(Office Communication mailed May 10, 2008, Claims App’x,
underlining omitted).

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The Examiner relied upon the following as evidence of
unpatentability:
Moulton WO 97/08762 March 6, 1997
Admitted prior art in the Drawings (Figures 1 and 2) and Specification of the
‘537 Patent.
Sohrab Hossain, Rechargeable Lithium Batteries (Ambient Temperature), in
HANDBOOK OF BATTERIES 36.1-36.3 (2d ed., David Linden ed., 1994)
(hereinafter “Linden”).

The Examiner rejected the claims as follows:
I. claims 22-29, 54-61, 78, 81, 82, 84, 94, 96, 108, and 109
under 35 U.S.C. § 112, ¶1, as failing to comply with the
written description requirement (Ans. 3-4);
II. claims 16 and 48 under 35 U.S.C. § 112, ¶2, as indefinite
(id. at 5);
III. claims 1-23, 26, and 27 under 35 U.S.C. § 102(b) as
anticipated by Moulton (id. at 5-7);
IV. claims 24, 25, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Moulton (id. at 7-8);
V. claims 30-64, 78, 81, 82, 84, 94, 96, 108, and 109 under
35 U.S.C. § 103(a) as unpatentable over Moulton in view
of Linden (id. at 8-9); and
VI. claims 1, 21-64, 78, 81, 82, 84, 94, 96, 108, and 109
under 35 U.S.C. § 103(a) as unpatentable over the
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admitted prior art in the Drawings and Specification of
the ‘537 Patent in view of Moulton (id. at 9-13).

ISSUES
Substantial New Question of Patentability
After prosecution on the merits was closed (i.e., after the claims were
allowed), the Supervisory Patent Examiner in the original examination stated
that Moulton does not teach “‘sealing materials hav[ing] side-arms extended
in parallel with the edge portions of the upper and lower dielectric
packages’” as recited in claim 1 (Office Communication mailed May 10,
2001 in Application 09/265,358).
The Examiner in this reexamination found that while Moulton was
cited after closing of prosecution in the original examination, the
reexamination statute does not necessarily preclude reexamination based on
previously cited prior art (Ans. 14-15). According to the Examiner, “Figure
6 [of the ‘537 Patent] shows the battery after fusing/sealing wherein the
sealing materials no longer have side arms that extend in parallel with the
edge portions of the upper and lower dielectric packages” (Ans. 14). Thus,
the Examiner reasoned that “[t]he issue being relied upon for a rejection
during reexamination (side arms with gradual curvature [after sealing]) was
not the same issue that was examined by the Examiner during the prior
prosecution (side arms extending in parallel [before sealing]” (id. at 15).
Appellant, on the other hand, contends that the reexamination based
on Moulton is inappropriate ab initio because the “prior Examiner and
Supervisory Patent Examiner carefully considered the scope of the claims as
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compared to the disclosure in [Moulton] and found that the shape of the strip
114 found in [Moulton] does not anticipate the shape of the sealing materials
as recited in claim 1” (App. Br. 8-9). Nevertheless, Appellant concedes that
“the term ‘parallel’ as recited in claim 1 does not require the side arms to
remain in the same shape as shown in FIG. 5 of the instant patent and
instead encompasses the shape as shown in FIG. 6 of the instant patent”
(App. Br. 9).
Thus, an issue raised by the respective positions of the Examiner in
this reexamination and Appellant is:
(1) Do we have jurisdiction to review the Director’s Order, which
held that Moulton raised a substantial new question of patentability within
the meaning of 35 U.S.C. § 303(a)?
(2) If so, does the limited post-allowance consideration of Moulton’s
teachings in the original examination preclude a substantial new question of
patentability based on Moulton?

Lack of Written Description: Claims 22-29, 54-61, 78, 81, 82, 84, 94,
96, 108, and 109
The Examiner found that the claims violate the written description
requirement of 35 U.S.C. § 112, ¶1, because “[t]he claims recite limitations
regarding a thickness of the side arms relative to a thickness of the
corresponding electrode tabs or a thickness of the sealing material on the
electrode tabs” that are not supported by the disclosure of the ‘537 Patent as
originally filed (Ans. 3-4). With respect to claim 22, the claim recites
“coating the sealing materials including the side arms on the electrode tabs
so as to form side arms having a thickness of at least a thickness of the
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corresponding electrode tabs” (Office Communication mailed May 10, 2008,
Claims App’x at 4-5; see also claim 54) but the Examiner found that the
‘537 Patent “does not support a side arm having a thickness equal to the
thickness of the electrode tab” (id. at 4). With respect to claim 23, the claim
recites “coating the sealing materials such that a thickness of the sealing
materials on the electrode tabs is less than the thickness of the side arms”
(Office Communication mailed May 10, 2008, Claim App’x, 5) but the
Examiner found that the ‘537 Patent “does not support a sealing material
having side arms wherein the side arms and the sealing material on the
electrode tabs do not form a planar surface . . . .” (Ans. 4; see also claim 55).
With respect to claim 78, the claim recites that, prior to sealing, “a thickness
of the side arms extending from the corresponding tab is greater than a sum
of thicknesses of portions of the sealing materials on the corresponding
electrode tab to be disposed between the edges of the upper and lower
dielectric packages and the electrode tab” (Office Communication mailed
May 10, 2008, Claims App’x, 12-13) but the Examiner found that the ‘537
Patent does not support this subject matter (Ans. 4). Likewise, the Examiner
also found claim 81 in violation of the written description requirement (id.).
Appellant, on the other hand, contends that: (i) claim 22 is supported
because “the disclosure of a limited number of examples does not prevent
the specification from supporting a broader recitation of the invention”
(App. Br. 35); (ii) claim 23 is supported because “the Examiner has not
provided evidence that the specification does not convey non-planar
surfaces, or that the shown example would not convey the use of non-planar
surfaces by necessity” (id. at 38); (iii) claim 78 is supported because “the
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disclosure of a limited number of examples does not prevent the
specification from supporting a broader recitation of the invention” (id. at
40); and (iv) claim 81 is supported because “[t]he Examiner has not
provided evidence that the planar surface assumed by the Examiner would
not result in this configuration as a matter of geometry or otherwise” (id. at
41).
Thus, the issues arising from the contentions of the Examiner and
Appellant are:
(3) Does the original disclosure reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 22 in which the coated side arms have a thickness
equal to the thickness of the electrode tab?
(4) Does the original disclosure reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 23 in which the coated side arms and the coated
sealing materials on the electrode tabs do not form a planar surface?
(5) Does the original disclosure reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 78 in which the thickness of the side arms is greater
than the sum of the thicknesses of the portions of the sealing materials on the
corresponding electrode tab to be disposed between the edges of the upper
and lower dielectric packages and the electrode tab?
(6) Does the original disclosure reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 81 in which the sealing materials have a shape in
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which, prior to sealing, the thickness of the side arms extending from the
corresponding tab is greater than a thickness of the tab?

Indefiniteness: Claims 16 and 48
The Examiner contends that claims 16 and 48 are indefinite because
they recite “an outermost edge of each of the side arms of the sealing
material terminates at a connection point” but that “it is unclear how the
outermost edge of each of the side arms terminates at a single point” (Ans.
5).
Appellant, on the other hand, asserts that the Examiner’s reasoning is
merely “conclusory” (App. Br. 43). According to Appellant, one skilled in
the relevant art would understand the scope of claims when read in light of
the disclosure in the ‘537 Patent, e.g., Figure 6 (id. at 43-44).
Thus, an issue raised by the respective positions of the Examiner and
Appellant is:
(7) Are claims 16 and 48 indefinite because “it is unclear how the
outermost edge of each of the side arms terminates at a single point?”

Anticipation over Moulton: Claims 1-23, 26, and 27
The Examiner found that Moulton describes every limitation of claim
1 (Ans. 5-7). Specifically, the Examiner found that “Moulton teaches a
battery cell enclosed by a protective package layer that is heat sealed around
the periphery of the cell,” wherein “[t]he cell includes an anode layer 12, an
electrolyte layer 14, 16 (separator), a cathode layer 18, 20, an anode tab 32
electrically connected to the anode and a cathode tab 34 electrically
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connected to the cathode (see Figures 1-2 and page 6, lines 8-34)” (Ans. 5).
The Examiner further found that Moulton teaches that a “seal between the
tabs and protective package can be enhanced/improved by forming a strip of
sealable material around a portion of the tabs,” which after application of
heat and pressure forms a hermetic seal (Ans. 5-6).
Appellant, on the other hand, contends that Moulton does not
anticipate claim 1 because “[t]here is no suggestion in [Moulton] that an
organic liquid electrolyte is used or contemplated . . . .” (App. Br. 12).
Appellant further argues that Moulton’s sealing material “prevent[s]
contamination from atmospheric-pressure moisture leaking into the
envelope,” which is not the same as “preventing such leakage where an
organic liquid electrolyte is used” as claimed herein (id.). Additionally,
Appellant argues that while Moulton describes the formation of a hermetic
seal, “small gaps exist between the strip 114 and edges 28a’, 28a” such that
strip 114 does not extend in parallel with the edges 28a’, 28a”” (id. at 13).
According to Appellant, “the thick metal tab 112 shown in FIG. 6 [of
Moulton] would always be thicker than the strips 114 and, especially
without a gradual curvature at location 114a, would be unable to extend
parallel to the edges 28a’, 28a” before or after sealing of the envelope 28”
(id.). According to Appellant, “pressure 140 [in Moulton’s Figure 4a] is
unable to cause adequate spreading of the sealing strip 114 at outer edges
since the thick metal tab 112 does not allow for deformation below the tab
112 thickness, resulting in a stress concentration on the tab 112 . . . .” (id. at
14).
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Thus, the issues arising from the contentions of the Examiner and
Appellant are:
(8) Does claim 1 require “an organic liquid electrolyte,” which is not
described in Moulton?
(9) Did the Examiner provide a sufficient basis upon which to shift
the burden of proof to Appellant to show that Moulton does not inherently
describe “sealing materials hav[ing] side arms extended in parallel with the
edge portions of the upper and lower dielectric packages for preventing
leakage of an organic liquid electrolyte while being interposed and fused
between the edge portions of the upper and lower dielectric packages” as
required by claim 1?
(10) Has Appellant identified entered, persuasive declaration
evidence (e.g., experimental data duplicating the prior art) showing that
Moulton's battery is incapable of “preventing leakage of an organic liquid
electrolyte?”

Anticipation/Obviousness over Moulton: Claims 24, 25, 28, & 29
The Examiner found that Moulton anticipates claims 24, 25, 28, and
29 for the same reasons given for claims 1-23, 26, and 27 (Ans. 7-8).
Alternatively, the Examiner concluded that a person having ordinary skill in
the art would have found the claimed subject matter obvious in view of
Moulton’s teachings (id. at 8). As to the limitation “disposing each of the
electrode tabs in a frame having a depression having the same size as the
side arms,” the Examiner asserted that these process limitations have not
been shown to result in a patentably different product (id.).
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Appellant, on the other hand, relies on substantially the same
arguments provided in support of claims 1-23, 26, and 27, which was that
Moulton’s sealing material results in gaps, thus rendering the sealing
material incapable of “preventing leakage of an organic liquid electrolyte”
(App. Br. 19-20).
Thus, an issue raised by the contentions of the Examiner and
Appellant is:
(11) Has Appellant shown that Moulton would necessarily result in
gaps after sealing – i.e., has Appellant directed us to entered, persuasive
declaration evidence (e.g., experimental data duplicating the prior art)
showing that Moulton's battery is incapable of “preventing leakage of an
organic liquid electrolyte?”

Obviousness over Moulton & Linden: Claims 30-64, 78, 81, 82, 84,
94, 96, 108, & 109
The Examiner found that while “Moulton does not explicitly teach a
battery containing a liquid organic electrolyte,” Linden teaches that lithium
ion cells, which are useful for consumer electronic devices such as cellular
phones, may contain either a liquid organic electrolyte or a solid polymer
electrolyte (Ans. 8). Because the Examiner further found that Moulton’s
disclosed battery may be used for portable telephones, the Examiner
concluded that one of ordinary skill in the art would have found it obvious to
use a liquid organic electrolyte in Moulton as shown in Linden (id. at 8-9).
In addition to arguments already made in connection with the
rejections based solely on Moulton, Appellant asserts that “Linden does not
suggest using a liquid organic electrolyte in all batteries, and does not
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suggest using the liquid organic electrolyte in batteries with sealing strips
114 such as that suggested in [Moulton]” (App. Br. 20). According to
Appellant, “Linden does not suggest an advantage to using the liquid organic
electrolyte . . . over a solid electrolyte not using a liquid organic electrolyte”
(id.). Appellant further contends that “the use of liquid electrolytes requires
an improved seal over the type of hermetic seal described in [Moulton]” (id.
at 21). Furthermore, Appellant argues that Moulton does not disclose a
battery useful for portable phones (id.). With specific reference to claim 30,
which recites “the cavity has a same shape before and after the positive
electrode, the negative electrode, the separator, and the organic liquid
electrolyte are housed in the cavity of the dielectric package” (id. at 22),
Appellant argues that Moulton “discloses a pouch type battery in which the
package layer 28 is made of plastic and aluminum, which thus has a
different shape before and after insertion of the cell 26” (id. at 22).
Thus, the issues arising from the contentions of the Examiner and
Appellant are:
(12) Did the Examiner identify a reason for combining Moulton and
Linden?
(13) Did Appellant identify entered, persuasive declaration evidence
(e.g., experimental data duplicating the prior art) showing that Moulton's
battery is incapable of “preventing leakage of an organic liquid electrolyte?”
(14) Did the Examiner err in concluding obviousness as to claim 30
because Moulton does not disclose a “cavity ha[ving] a same shape before
and after the positive electrode, the negative electrode, the separator, and the
organic liquid electrolyte are housed in the cavity of the dielectric package?”
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Obviousness over Admitted Prior Art & Moulton: Claims 1, 21-64,
78, 81, 82, 84, 94, 96, 108, and 109
The Examiner found that Figures 1 and 2 of the ‘537 Patent disclose a
prior art secondary battery including a battery body having a positive
electrode, a negative electrode, and a separator in stacked form and a
dielectric package for sealing around the battery body (Ans. 9). The
Examiner further found that while the prior art battery did not include a
sealing material as claimed herein, the Specification of the ‘537 Patent states
that the prior art device prevented leakage of liquid organic electrolyte for
20 minutes (id. at 10). The Examiner then relied on the teachings of
Moulton to support the conclusion that one of ordinary skill in the art would
have found it obvious to provide a sealing material in the secondary battery
of the admitted prior art to improve the seal around a portion of the tabs (id.
at 13).
Appellant, on the other hand, contends that Moulton “teaches away
from using the sealing strips 114 for low power applications such as portable
telephones having tabs less than 1-2 mils” (App. Br. 28). Furthermore,
Appellant argues that the Examiner did not establish that the hermetic seal
provided by Moulton would be sufficient for preventing leakage of organic
liquid electrolytes (id. at 29).
Thus, the issues arising from the contentions of the Examiner and
Appellant are:
(15) Does Moulton teach away from using the disclosed sealing
materials in low power applications such as those disclosed for the device of
the admitted prior art?
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(16) Has Appellant identified entered, persuasive declaration
evidence (e.g., experimental data duplicating the prior art) showing that
Moulton’s sealing material is incapable of “preventing leakage of an organic
liquid electrolyte?”

FINDINGS OF FACT
Substantial New Question of Patentability
1. The Examiner in the ‘537 Patent allowed the claims over
United States Patent 4,664,994 on the basis that the prior art
reference does not teach “sealing materials hav[ing] side arms
extended in parallel with the edge portions of the upper and
lower dielectric packages” (Notice of Allowability mailed
February 12, 2001 at 3).
2. Moulton was cited to the Examiner in the ‘537 Patent only after
prosecution on the merits was closed (Supplemental Notice of
Allowability mailed May 10, 2001; Information Disclosure
Statement filed February 26, 2001; Notice of Allowability
mailed February 12, 2001).
3. The Examiner in the prosecution of the ‘537 Patent did not
apply Moulton in any rejection of the claims.
4. The Examiner’s consideration of Moulton in the prosecution of
the ‘537 Patent was limited to whether the side arms of the
sealing materials were parallel with the edge portions of the
upper and lower dielectric packages, as follows (May 10, 2001
Supplemental Notice of Allowability at 2):
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It is further noted that the reference, WO 97/08762
[Moulton], does teach a sealing material with side-arms,
however, the sidearms are not in parallel with the edge
portions of the upper and lower dielectric packages. The
claimed subject matter is to an elongated strip having a
cross-section shaped with a gradual curvature as shown
in claim 5 and figure 3. Thus, the prior art does not read
upon the instant claims. [Italics added.]
5. Figures 5 and 6 of the ‘537 Patent are reproduced below:

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Figures 5 and 6 depict a perspective view of a secondary battery
according to an embodiment of the claimed invention and a
section view showing in detail a sealing portion between
electrode tabs and upper and lower dielectric packages in the
secondary battery, respectively, wherein 55 and 55’ represent
the sealing materials (col. 3, ll. 24-29; col. 5, ll. 36-40).
6. Appellant concedes: “[T]he term “parallel” as recited in claim
1 does not require the side arms to remain in the same shape as
shown in FIG. 5 of the instant patent and instead encompasses
the shape shown in FIG. 6 of the instant patent” (App. Br. 9).
7. The Examiner in this reexamination, acting pursuant to
delegated authority of the Director under 35 U.S.C. § 303(a),
held: “It is important to note that WO 97/08762 [Moulton],
which was considered by the examiner during [the original]
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prosecution, has been viewed in a new light and presents a
substantial new question of patentability” (Order Granting
Request for Ex Parte Reexamination mailed May 28, 2003 at
3).
8. Appellant did not file a timely petition pursuant to 37 C.F.R. §
1.181 to overturn the Examiner’s determination that Moulton
raises a substantial new question of patentability under 35
U.S.C. § 303(a) but did contest the application of the reference
throughout the reexamination proceeding.

Additional Facts Relevant to Lack of Written Description: Claims 22-
29, 54-61, 78, 81, 82, 84, 94, 96, 108, and 109
9. Figure 3 of the ‘537 Patent is reproduced below:

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Figure 3 of the ‘537 Patent depicts an exploded perspective
view of a secondary battery according to a preferred
embodiment of the invention, wherein sealing materials 25 and
25’ are coated on predetermined surface portions of electrode
tabs 23 and 23’ (col. 3, ll. 18-20 and 45-47).
10. Figure 4 of the ‘537 Patent is reproduced below:

Figure 4 depicts a section view in detail of a sealing portion
between electrode tabs and upper and lower dielectric packages
in the secondary battery shown in Figure 3 (col. 3, ll. 21-23).
11. Figure 7 of the ‘537 Patent is reproduced below:
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Figure 7 of the ‘537 Patent is said illustrate a method for
coating sealing materials having side arms on the
electrode tabs of the secondary battery shown in Figure 5
(reproduced above in Fact 5), wherein 53 is the electrode
tab and 55 is the sealing material (col. 3, ll. 30-32; col. 5,
ll. 62-64).
12. The ‘537 Patent touts the advantage of using a sealing material
in the manner as shown in Figure 4 as follows:
In fact, the adhesive force between the electrode
tabs 23 and 23’ pre-coated with SURLYN (manufactured
by Dupont Co.) as the sealing materials 25 and 25’ and
the dielectric package 30 covered with SURLYN as heat
sealable material layer is approximately 98.2 gf/mm,
which is 30 times higher than the adhesive force of
approximately 3.4 gf/mm between non-coated electrode
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tabs and the dielectric package covered with SURLYN as
a heat sealable material... [col. 4, ll. 53-59].

13. The’537 Patent does not contain any explicit description of an
embodiment in which sealing material is not coated on the top
portions of the electrode tabs.

Additional Fact Relevant to Indefiniteness: Claims 16 and 48
14. The ‘537 Patent states:
Also, electrode tabs 23 and 23’ acting as electrical paths
for inducing current generated in the battery body 20 to
the outside are connected to the battery body 20 by
connection tabs 21 and 21’ respectively provided on the
positive and negative electrodes [col. 3, ll. 41-45].

Additional Facts Relevant to Anticipation over Moulton: Claims 1-29
15. Appealed claim 1 does not positively recite that the secondary
battery comprises an organic liquid electrolyte.
16. Dependent claim 33 further limits appealed claim 1 by reciting
that the secondary battery “further compris[es] an electrolyte
comprising the organic liquid electrolyte.”
17. In view of the further limitation recited in dependent claim 33
that the secondary battery further comprises an electrolyte
comprising an organic liquid electrolyte, one skilled in the
relevant art would understand that claim 1 does not require an
organic liquid electrolyte as part of the secondary battery.
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18. The ‘537 Patent states that the dielectric package material “is in
the form of a film obtained by forming a heat sealable material
layer [e.g., SURLYN®] on a metal base such as aluminum thin
film” (col. 3, ll. 48-55).
19. The ‘537 Patent further states that for “strong adhesiveness,”
the heat sealable material coated on the electrode tabs may be
the same material as the heat sealable material layer of the
dielectric package, e.g., SURLYN® (col. 4, ll. 7-10 and 52-59).
20. The ‘537 Patent does not limit the heat and pressure to be
applied in adhering the dielectric package with the heat sealable
materials (col. 4, ll. 11-16).
21. The ‘537 Patent does not limit the organic liquid electrolyte to
any particular composition (col. 2, ll. 40-44).
22. The ‘537 Patent states (col. 4, ll. 60-67):
Also, in the leakage preventing effect of the
organic liquid electrolyte, when the conventional Li ion
polymer battery having the structure of FIG. 2,
containing 3g of organic liquid electrolyte, is left at 90°
C. under a pressure of 0.2 atm, the organic liquid
electrolyte leaks after 20 minutes. However, the Li ion
polymer battery having the structure of FIG. 4 according
to the present invention leaks organic liquid electrolyte
after 16 hours under the same conditions.
23. Moulton discloses that electrical batteries with relatively thin or
relatively thick copper tabs are used in low-power (e.g.,
portable telephone) as well as high-power applications (p. 1, l.
24 to p. 2, l. 7).
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24. Moulton further discloses that an objective is “to provide an
electrical cell with a thick tab that can be hermetically sealed to
the protective package covering the cell” (p. 2, ll. 26-29).
25. Moulton’s Figures 1 and 2 are reproduced below:

Moulton’s Figures 1 and 2 depict a battery 26 including: a cell
laminate with an anode layer 12, first and second layers of an
ionically conductive electrolyte 14, 16 contacting anode 12 on
opposite sides, respectively, first and second cathode layers 18,
20 contacting the sides of electrolyte 14 and 16 not in contact
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with anode layer 12; current collectors 22 and 24; an anode tab
32; and a cathode tab 34 (p. 6, ll. 8-34).
26. Moulton teaches that the battery is enveloped by a protective
package layer that renders the battery “impermeable to air and
water” (p. 6, ll. 11-16).
27. According to Moulton, the protective package layer typically
comprises one or more plastic material layers and an aluminum
foil (p. 6, ll. 16-18).
28. Moulton’s Figure 3A is reproduced below:

Moulton’s Figure 3A depicts a solid thick metal tab 112, a
portion of which is covered by a strip of a sealable material to
enhance the seal around the anode and cathode tabs (p. 8, ll. 30-
32).
29. Moulton teaches that the “sealable material in strip 114 does
not have to be the same as the package material” but “has to be
‘compatible’ with the package material in order for hermetic
sealing to occur between them” (p. 10, ll. 1-5).
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30. Moulton discloses that the sealable material in strip 114 may
be, e.g., SURLYN® (p. 10, ll. 11-18).
31. Moulton’s Figures 4A and 6 are reproduced below:

Moulton’s Figure 4A depicts the sealing of the envelope
material 28 including edge 28a around tab 112 using a strip of
sealable material 114 while Figure 6 shows the disposition of
the sealing material prior to application of heat and pressure (p.
9, ll. 27-32; p. 13, l. 10 to p. 14, l. 25).
32. Moulton teaches (p. 13, ll. 16-22; emphasis added):
As shown in FIG. 6, the strip of sealable material 114
with the gradual curvature, such as at 114a, is attached to
a center portion of solid tab 112. The gradual curvature
(instead of abrupt corners) of strip 114 enables a better
adhesion and sealing between the strip of the heat
sealable material 114 with edges 28a’ and 28a”.
33. Moulton teaches the application of heat and pressure (0°F to
300°F and 0-500 psi) (p. 14, ll. 4-21).
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34. Hyung-gon Noh (Noh) is a named inventor of the ‘537 Patent
(‘537 Patent, front page).
35. Noh was Patent Owner’s employee on January 5, 2004, the date
on which Noh executed a declaration pursuant to 37 C.F.R.
§ 1.132 (Noh Declaration, ¶2).
36. Noh declares that Moulton does not describe an organic liquid
electrolyte (id., ¶7).
37. Noh states that Moulton’s sealing method is insufficient to form
a seal that would prevent leakage of an organic liquid
electrolyte (id., ¶8).
38. Noh did not refer to any actual experimental evidence in which
Moulton’s disclosed sealing method was duplicated for a
meaningful comparison against the claimed invention (id.).
39. After final rejection, the Examiner in this reexamination stated
(Ex Parte Reexamination Interview Summary of April 26,
2005):
Continuation of Description of Exhibit Shown or
Demonstration Conducted: computer movie showing the
battery of Moulton as manufactured by Applicant, when
placed in a sealing simulation shows evidence of gassing
(bubbles present in movie). The battery of the patented
invention, as manufactured by Applicant, did not show
evidence of gassing when placed in the sealing
simulation. Applicant also presented pictures showing
the battery of Moulton (as manufactured by Applicant)
depicted the tabs and sealing materials wherein the light
green area appears to show evidence of spaces between
the top and bottom layer of the battery package which
allowed the gassing (bubbles) present in the movie,
Copy of movie provided to the Examiner.
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40. The Examiner indicated in the April 26, 2005 Interview
Summary form that “[a]greement with the respect to the claims
. . . was not reached” (id.).
41. On May 12, 2005, Patent Owner filed a paper captioned
“FURTHER SUPPLEMENTAL RESPONSE AND REQUEST
FOR RECONSIDERATION UNDER 37 C.F.R. § 1.116 FOR
EX PARTE REEXAMINATION” including a declaration
pursuant to 37 C.F.R. § 1.132 executed by Noh on May 10,
2005 allegedly providing “details in regards to the movies and
pictures during the [April 26, 2005] Examiner Interview” (p. 2).
42. The Examiner denied entry of the May 10, 2005 Noh
Declaration because Patent Owner “failed to provide a showing
of good and sufficient reasons why the affidavit or other
evidence is necessary and was not earlier presented” (Ex Parte
Reexamination Advisory Action Before the Filing of an Appeal
Brief mailed May 27, 2005).
43. Patent Owner filed a petition pursuant to 37 C.F.R. § 1.181 to
invoke supervisory authority over the Examiner’s decision to
deny entry of the May 10, 2005 Noh Declaration (Petition filed
July 11, 2005).
44. Director Jacqueline M. Stone of Technology Center 1700
denied Patent Owner’s July 11, 2005 Petition (Decision on
Petition mailed July 28, 2005).
45. In reply to another petition filed by Patent Owner on June 7,
2006, Director Lissi Mojica Marquis of the Central
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Reexamination Unit stated (Decision on Petition mailed March
5, 2008 at 5):
The exhibits shown during the interview were not
required by the Office, and entry was not requested [by
Patent Owner] via a petition under 37 CFR 1.191(a)(3)
[sic, 1.181(a)(3)]. Even if the exhibits A-D comply with
the requirements of 37 CFR 1.191 [sic], such exhibits
would have to comply with 37 CFR 1.116 in order to be
admitted to the record for consideration by the examiner
after a final rejection. The examiner has stated that the
evidence filed on May 12, 2005 did not comply with the
requirements of 37 CFR 1.116, and therefore, would not
be entered . . . Upon petition, the technology center
director agreed with the examiner’s position . . . Patent
owner did not request reconsideration of this decision.

Additional Fact Relevant to Obviousness over Moulton & Linden:
Claims 30-64, 78, 81, 82, 84, 94, 96, 108, & 109
46. Linden teaches that liquid organic electrolytes are
interchangeable with solid polymer electrolytes in rechargeable
lithium batteries and suggests that it is safer than lithium in
metallic form (p. 36.2; Figure 36.1).

Additional Fact Obviousness over Admitted Prior Art & Moulton:
Claims 1, 21-64, 78, 81, 82, 84, 94, 96, 108, and 109
47. Figure 2 (Prior Art) of the ‘537 Patent is reproduced below:
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Figure 2 of the ‘537 Patent depicts the sealing state between a
dielectric package and electrode tabs in a conventional
secondary battery (col. 3, ll. 15-17).

PRINCIPLES OF LAW
Substantial New Question of Patentability
35 U.S.C. § 303(a) “now mandates that ‘the existence of a substantial
new question of patentability is not precluded by the fact that a patent or
printed publication was previously cited by or to the Office or considered by
the Office.’” In re Swanson, 540 F.3d 1368, 1379-80 (Fed. Cir. 2008).
Section 303(a) now returns the focus “to whether the particular question of
patentability presented by the reference in reexamination was previously
evaluated by the PTO.” Id. at 1380. “[T]o decide whether a reference that
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was previously considered by the PTO creates a substantial new question of
patentability, the PTO should evaluate the context in which the reference
was previously considered and the scope of the prior consideration and
determine whether the reference is now being considered for a substantially
different purpose.” Id.

Claim Construction
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification . . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” ICON Health, 496 F.3d at 1379.

Written Description
“If the applicant claims embodiments of the invention that are
completely outside the scope of the specification [and drawings], then the
examiner or Board need only establish this fact to make out a prima facie
case [of failure to comply with the written description requirement].” In re
Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). See also In re Wertheim, 541
F.2d 257, 263-64 (CCPA 1976) (“By pointing to the fact that claim 1 [‘at
least 35%’] reads on embodiments outside the scope of the description [25-
60%], the PTO has satisfied its burden. Appellants thus have the burden of
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showing that the upper limit of solids content described, i.e., 60%, is
inherent in ‘at least 35%,’ as that limitation appears in claim 1.”).
The mere fact that a later presented claim recites broader subject
matter relative to the original disclosure does not necessarily establish that
the claim is insufficiently described in the specification. See, e.g., In re
Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981). Nevertheless, our appellate
reviewing court cautioned that obviousness is an inappropriate standard for
evaluating compliance with the written description requirement. Lockwood
v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Thus, the
original disclosure must “immediately convey” to one skilled in the relevant
art that the inventors had possession of the broader subject matter. Cf. In re
Smythe, 480 F.2d 1376, 1384 (CCPA 1973). Accord In re Curtis, 354 F.3d
1347, 1355 (Fed. Cir. 2004) (genus claim not supported by narrower
disclosure where there was unpredictability); PIN/NIP Inc. v. Platte
Chemical Co., 304 F.3d 1235, 1247-48 (Fed. Cir. 2002) (“[N]othing in the
specification indicates that the invention is anything other than a mixture of
two chemicals . . . [T]he originally filed application, which is devoid of any
mention or even implication that the two chemicals can be applied in a
spaced, sequential manner, does not support the later-added claim 33.”);
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (broad claims
not supported by a species in the original disclosure where the disclosure
touted the advantage of and thus limited the invention to the disclosed
species); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed.
Cir. 1998) (holding that patent claims directed to a sectional sofa were
invalid as lacking written description under 35 U.S.C. § 112, ¶1, because
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they did not limit the location of the reclining controls to the console area in
direct conflict with the original disclosure, which identified the console as
the only possible location of the controls).

Definiteness
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).

Anticipation
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“A patent applicant is free to recite features of an apparatus either
structurally or functionally . . . Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” Schreiber, 128 F.3d
at 1478 (internal citation omitted). When the PTO has reason to believe that
a functional limitation asserted to be critical may in fact be an inherent
characteristic of the prior art, it possesses the authority to shift the burden of
proof to applicant or patent owner to prove otherwise. Id.; accord In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Whether the rejection is based on inherency under 35 U.S.C.
§ 102 or on obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
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inability to manufacture products or to obtain and compare prior art
products. Best, 562 F.2d at 1255.
In considering the disclosures of prior art references, it is appropriate
to take into account not only the specific teachings of the references but also
the inferences one skilled in the relevant art would reasonably be expected to
draw therefrom. In re Preda, 401 F.2d 825, 826-27 (CCPA 1968).

Obviousness
The Supreme Court of the United States instructed “that when a patent
claims a structure already known in the prior art that is altered by mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). KSR further explains that “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one.” Id. at
417.
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation contained within the
prior art references). Id. at 419 (“The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.”).
A reference “teaches away” if a person of ordinary skill in the art
would have been discouraged or led to a divergent path from the one taken
by the inventors. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). While a
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teaching away is a significant factor to be considered, “[a] known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.” Id.;
accord In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[M]ere
disclosure of alternative designs does not teach away.”).

ANALYSIS
Arguments for Separate Patentability
In support of patentability over the prior art, Appellant has presented
various arguments under separate headings and sub-headings. We address
these arguments separately only to the extent that they constitute distinct,
separate arguments within the meaning of 37 C.F.R. § 41.37(c)(1)(vii).

Substantial New Question of Patentability
We have jurisdiction to review the Examiner’s decision that Moulton
raises a substantial new question of patentability. See Clarification on the
Procedure for Seeking Review of a Finding of a Substantial New Question
of Patentability in Ex Parte Reexamination Proceedings, 75 Fed. Reg. 36357
(June 25, 2010).
35 U.S.C. § 303(a) “now mandates that ‘the existence of a substantial
new question of patentability is not precluded by the fact that a patent or
printed publication was previously cited by or to the Office or considered by
the Office.’” Swanson, 540 F.3d at 1379-80. Instead, the focus is “whether
the particular question of patentability presented by the reference in
reexamination was previously evaluated by the PTO.” Id. at 1380. “[T]o
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decide whether a reference that was previously considered by the PTO
creates a substantial new question of patentability, the PTO should evaluate
the context in which the reference was previously considered and the scope
of the prior consideration and determine whether the reference is now being
considered for a substantially different purpose.” Id.
The Examiner and the Supervisory Patent Examiner in the prosecution
of the ‘537 Patent appear to have limited their post-allowance consideration
of Moulton to whether it made up for a particular claimed feature lacking in
what they regarded as the closest prior art (United States Patent 4,664,994)
(Facts 1-3). Without any reasonably detailed analysis, the Examiners in the
original prosecution merely commented that Moulton’s “sidearms are not in
parallel with the edge portions of the upper and lower dielectric packages”
because they have a “gradual curvature” (Fact 4). Nowhere did the original
Examiners provide any indication that Moulton had been considered as a
principal prior art reference, taking into account the enlightenment in the
Drawings and Specification of the ‘537 Patent.
As Appellant readily concedes, Figure 6 of the ‘537 Patent would
have indicated to one skilled in the relevant art that the sealing material in
the secondary battery produced (i.e., after sealing) can have a gradual
curvature (Facts 5 and 6). It follows then that reexamination based on
Moulton cannot constitute an old question of patentability because Appellant
is not relying on the sole reasoning of the prior Examiner and Supervisory
Patent Examiner that the claim limitation in question does not encompass the
“gradual curvature” of Moulton’s sealing material. Thus, it is not surprising
that Appellant did not file a timely petition pursuant to 37 C.F.R. § 1.181 to
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review the Examiner’s determination that Moulton raises a substantial new
question of patentability (Facts 7 and 8).
Under these circumstances, we are in agreement with the current
Examiner’s position that “[t]he issue being relied upon for a rejection during
reexamination (side arms with gradual curvature [after sealing]) was not the
same issue that was examined by the Examiner during the prior prosecution
(side arms extending in parallel [before sealing])” (Ans. 15).

Lack of Written Description: Claims 22-29, 54-61, 78, 81, 82, 84, 94,
96, 108, and 109
With respect to claim 22, the Examiner’s basic position is that the
disclosure of the ‘537 Patent does not contain written description sufficient
to support an embodiment in which the thickness of the side arm (prior to
applying heat and pressure) is equal to the thickness of the electrode tab
(Ans. 4). In counter argument, Appellant contends that “there is no evidence
of record that one of ordinary skill in the art would understand the specific
examples shown as conveying only this specific example [sic]” (App. Br.
35).
We agree with the Examiner that claim 22 violates the written
description requirement because it reads on an embodiment that is not
supported by the original disclosure. No embodiment described in the
original disclosure of the ‘537 Patent shows a sealing material having side
arms having thicknesses equal to the thickness of the electrode tab (Facts 5,
9-11, and 13). Thus, the Examiner has established a prima facie case of lack
of written description. In re Alton, 76 F.3d at 1175; Wertheim, 541 F.2d at
263-64.
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Appellant did not rebut this prima facie case by pointing to any
disclosure that supports the now claimed subject matter. Indeed, the original
disclosure of the ‘537 Patent indicates that the inventors did not possess an
embodiment in which the thickness of the side arm (prior to applying heat
and pressure) is equal to the thickness of the electrode tab. To the contrary,
the ‘537 Patent touts the advantage of disposing a sealing material between
the upper and lower dielectric packages and the electrode tabs (Fact 12).
Tronzo, 156 F.3d at 1159 (broad claims not supported by a species in the
original disclosure where the disclosure touted the advantage of and thus
limited the invention to the disclosed species); Gentry Gallery, 134 F.3d at
1479 (holding that patent claims directed to a sectional sofa were invalid as
lacking written description under 35 U.S.C. § 112, ¶1, because they did not
limit the location of the reclining controls to the console area in direct
conflict with the original disclosure, which identified the console as the only
possible location of the controls).
We also agree with the Examiner that claim 23, which recites “a
thickness of the sealing materials on the electrode tabs is less than the
thickness of the side arms,” violates the written description requirement
(Ans. 4). While it is true that claim 23 includes within its broad scope the
embodiments shown in Figures 3, 5 and 7 of the ‘537 Patent, the claim
encompasses more than what is disclosed. As pointed out by the Examiner
(Ans. 4), claim 23 reads on an embodiment in which the thicknesses of the
side arms are such that the side arms are not co-planar with the sealing
material over the electrode tabs. Because a co-planar configuration is the
only possible configuration described in the ‘537 Patent, claim 23 violates
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the written description requirement. PIN/NIP (“[N]othing in the
specification indicates that the invention is anything other than a mixture of
two chemicals . . . [T]he originally filed application, which is devoid of any
mention or even implication that the two chemicals can be applied in a
spaced, sequential manner, does not support the later-added claim 33.”);
Gentry Gallery, 134 F.3d at 1479.
Appellant argues that “the Examiner has not provided evidence that
the specification does not convey non-planar surfaces . . . .” (App. Br. 38).
This argument appears to be based on the belief that the non-planar
configuration would have been obvious over Figures 3, 5, and 7 of the ‘537
Patent. Obviousness, however, is an inappropriate standard for measuring
compliance with the written description requirement. Lockwood, 107 F.3d at
1572.
Claims 78, 81, and 110 violate the written description requirement for
reasons analogous to those given for claims 22 and 23.
For these reasons, we uphold the Examiner’s rejection on this ground.

Indefiniteness: Claims 16 and 48
The Examiner asserts that “it is unclear how the outermost edge of
each of the side arms terminates at a single point” (Ans. 5). Appellant, on
the other hand, argues that the “Examiner does not provide an explanation or
evidence as to how one of ordinary skill in the art, in view of the claims, the
specification, and the prior art, would be unable to determine the metes and
bounds of the [claimed] invention” (App. Br. 43).
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We must agree with Appellant on this issue. To support the rejection,
the Examiner appears to have interpreted the term “point” in the claim
recitation “connection point” to be a geometric point. We think that this
interpretation is unreasonable because it did not take into account the
disclosure of the Specification. When “connection point” is read in light of
the Specification, one skilled in the relevant art would immediately
understand that the inventors were not referring to a geometric point but
rather a “point” in the more general sense – i.e., a point for electrical
connection (Fact 14).

Anticipation over Moulton: Claims 1-23, 26, and 27
Contrary to Appellant’s erroneous belief, appealed claim 1 does not
require the claimed secondary battery to contain an organic liquid
electrolyte. Instead, claim 1 merely requires that the claimed battery have a
particular characteristic with respect to the sealing materials (i.e., “sealing
materials have side arms extended in parallel with the edge portions of the
upper and lower dielectric packages for preventing leakage of an organic
liquid electrolyte”). Appellant failed to show that Moulton lacks this
characteristic.
Specifically, appealed claim 1 recites that the claimed secondary
battery comprises a particular battery body, a dielectric package, and sealing
materials. An organic liquid electrolyte, however, is not listed as one of the
components “comprising” the claimed secondary battery (Fact 15). While
claim 1 does recite “sealing materials . . . for preventing leakage of an
organic liquid electrolyte,” we construe this language as merely reciting a
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function for the sealing materials top prevent organic liquid electrolyte if it
were present. Schreiber, 128 F.3d at 1478 (holding that “dispensing top for
passing only several kernels of a popped popcorn at a time from an open-
ended container filled with popped popcorn” merely recited function).
Our construction of claim 1 is consistent with the recitations of, e.g.,
dependent claim 33, which is presumed to further limit claim 1 and specifies
that the secondary battery “further comprise[s] an electrolyte comprising an
organic liquid electrolyte” (Facts 16 and 17). See 37 C.F.R. § 1.75(c).
We also find that the Examiner established a reasonable basis upon
which to shift the burden of proof to Appellant to show that the seals in
Moulton’s battery are not capable of performing the function recited in claim
1. The ‘537 Patent informs one skilled in the relevant art that even the
claimed sealing materials “leaks organic liquid electrolyte after 16 hours
under” a specified set of conditions (Fact 22). Moulton discloses a battery
that is formed from the same or substantially the same materials using the
same or substantially the same sealing method described in the ‘537 Patent
(Facts 18-21, 23, and 25-33). Moulton even states that the sealing materials
provide a hermetic seal, thus eliminating the possibility of the presence of
any gaps (Fact 24). Under these circumstances, it would reasonably appear
that Moulton’s battery would have a seal capable of “preventing leakage of
organic liquid electrolyte” to the same or similar extent as recited in claim 1.
Spada, 911 F.2d at 708; Best, 562 F.2d at 1255.
Appellant failed to direct us to entered, persuasive experimental
evidence to the contrary – i.e., experimental evidence in which Moulton is
duplicated using the same structure, heat, and pressure described therein
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(Facts 39-45). While Noh alleges that Moulton’s seals do not perform the
recited function, Noh’s statement amounts to conjecture or speculation by an
interested party and is therefore accorded little weight (Facts 34-38). On this
point, it is well settled that mere lawyer’s arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
We find no merit in Appellant’s contention that in Moulton’s Figure
6, “small gaps exist between strip 114 and the edges 28a’, 28a’’ such that the
strip 114 does not extend in parallel with the edges 28a’, 28a’’” (App. Br.
13). As stated by the Examiner (Ans. 17-18 and 20), Moulton’s Figure 6
shows the sealing material prior to the application of heat and pressure (Fact
31). Furthermore, we are in complete agreement with the Examiner (Ans.
18-19) that the Drawings of the ‘537 Patent undermine the argument that
Moulton’s sealing material would not eliminate the gaps upon application of
heat and pressure (Facts 5, 9, and 10).
For these reasons, we affirm the Examiner’s rejection.

Anticipation/Obviousness over Moulton: Claims 24, 25, 28, & 29
Appellant relies on the same arguments offered in support of claims 1-
23, 26, and 27. For the reasons already given, we find Appellant’s
arguments unpersuasive to overcome the Examiner’s rejection.

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Obviousness over Moulton & Linden: Claims 30-64, 78, 81, 82, 84,
94, 96, 108, & 109
Claim 30 recites that “the dielectric package comprises a pre-shaped
package forming a cavity to house . . . the organic liquid electrolyte.” The
Examiner acknowledged that Moulton does not explicitly disclose the
presence of an organic liquid electrolyte (Ans. 8). To account for this
difference, the Examiner relied on the teachings of Linden (Ans. 8-9).
We detect no error in the Examiner’s reasoning. Linden teaches that
organic liquid electrolytes are interchangeable with solid polymer
electrolytes and even suggests that is safer than lithium in metallic form
(Fact 46). Thus, we share the Examiner’s conclusion that a person having
ordinary skill in the art would have found it obvious to substitute Moulton’s
electrolyte with a organic liquid electrolyte with the reasonable expectation
that these electrolytes would work be interchangeable in rechargeable
batteries. KSR, 550 U.S. at 416 (“when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.”).
While Linden does not explicitly teach that organic liquid electrolytes
can be used in the same types of batteries disclosed in Moulton, this does not
negate the Examiner’s obviousness conclusion. KSR, 550 U.S. at 416
(“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one.”).
Appellant contends that “the use of liquid electrolytes requires an
improved seal over the type of hermetic seal described in [Moulton]” (App.
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Br. at 21). We find this argument unpersuasive because no credible
evidence supports it. As we discussed above, it would reasonably appear –
based on the substantial similarities between the structures and sealing
methods of the claimed invention and Moulton – that Moulton’s battery
would have a seal that would be capable of “preventing leakage of organic
liquid electrolyte” to the same or similar extent as recited in claim 1. Spada,
911 F.2d at 708; Best, 562 F.2d at 1255.
With respect to claim 30, which recites “the cavity has a same shape
before and after the positive electrode, the negative electrode, the separator,
and the organic liquid electrolyte are housed in the cavity of the dielectric
package,” Appellant argues that Moulton “discloses a pouch type battery in
which the package layer 28 is made of plastic and aluminum, which thus has
a different shape before and after insertion of the cell 26” (App. Br. at 22).
This argument is unpersuasive, because the ‘537 Patent also describes the
use of a heat sealable material over a metal base such as aluminum (Fact 18).

Obviousness over Admitted Prior Art & Moulton: Claims 1, 21-64,
78, 81, 82, 84, 94, 96, 108, and 109
The Examiner reasoned that although the admitted prior art (Figure 2
of the ‘537 Patent) does not disclose the claimed sealing material around the
tabs, Moulton’s teachings would have led a person having ordinary skill in
the art to provide such sealing materials in order to improve the seal (Ans. 9-
13).
According to Appellant, Moulton “teaches away from using sealing
strips 114 for low power applications such as portable telephones having
tabs less than 1-2 mils” because “the sealings strips 114 are for high power
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46
applications having thick tabs (preferably in the 13-15 mil range)” (App. Br.
28). This argument lacks merit because the appealed claims fail to specify
any thickness range or limit the invention to any particular type of secondary
battery. Nothing in Moulton would have discouraged a person of ordinary
skill in the art to a divergent path from the one taken by the inventors.
Gurley, 27 F.3d at 553.
Lastly, nothing substantiates Appellant’s contention that Moulton’s
seal would be incapable of preventing leakage of an organic liquid
electrolyte.

CONCLUSION
On this record, we determine that:
we have jurisdiction to review the Director’s Order, which held that
Moulton raised a substantial new question of patentability within the
meaning of 35 U.S.C. § 303(a);
the limited post-allowance consideration of Moulton’s teachings to
account for a difference between the claims and another reference in the
original examination does not preclude a substantial new question of
patentability based on Moulton in this reexamination proceeding;
the original disclosure does not reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 22 in which the coated side arms have a thickness
equal to the thickness of the electrode tab;
the original disclosure does not reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
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encompassed by claim 23 in which the coated side arms and the coated
sealing materials on the electrode tabs do not form a planar surface;
the original disclosure does not reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 78 in which the thickness of the side arms is greater
than the sum of the thicknesses of the portions of the sealing materials on the
corresponding electrode tab to be disposed between the edges of the upper
and lower dielectric packages and the electrode tab;
the original disclosure does not reasonably convey to one skilled in
the relevant art that the inventors had possession of the invention
encompassed by claim 81 in which the sealing materials have a shape in
which, prior to sealing, the thickness of the side arms extending from the
corresponding tab is greater than a thickness of the tab;
claim 1 does not require “an organic liquid electrolyte;”
Moulton provides a sufficient basis upon which to shift the burden of
proof to Appellant to show that Moulton does not inherently describe
“sealing materials hav[ing] side arms extended in parallel with the edge
portions of the upper and lower dielectric packages for preventing leakage of
an organic liquid electrolyte while being interposed and fused between the
edge portions of the upper and lower dielectric packages” as required by
claim 1;
Appellant failed to identify entered, persuasive declaration evidence
(e.g., experimental data duplicating the prior art) showing that the prior art
battery is incapable of “preventing leakage of an organic liquid electrolyte;”
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Appellant did not show that Moulton would necessarily result in gaps
after sealing and thus incapable of “preventing leakage of an organic liquid
electrolyte;”
the Examiner articulated a legally sufficient reason for combining
Moulton and Linden;
Appellant failed to show that Moulton does not necessarily disclose a
“cavity ha[ving] a same shape before and after the positive electrode, the
negative electrode, the separator, and the organic liquid electrolyte are
housed in the cavity of the dielectric package;” and
Moulton does not teach away from using the disclosed sealing
materials in low power applications such as those disclosed for the device of
the admitted prior art.
The Examiner erred, however, in concluding that claims 16 and 48 are
indefinite.

DECISION
The Examiner’s decision to reject:
claims 22-29, 54-61, 78, 81, 82, 84, 94, 96, 108, and 109 under 35
U.S.C. § 112, ¶1, as failing to comply with the written description
requirement is AFFIRMED;
claims 16 and 48 under 35 U.S.C. § 112, ¶2, as indefinite is
REVERSED;
claims 1-23, 26, and 27 under 35 U.S.C. § 102(b) as anticipated by
Moulton is AFFIRMED;
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claims 24, 25, 28, and 29 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Moulton
is AFFIRMED;
claims 30-64, 78, 81, 82, 84, 94, 96, 108, and 109 under 35 U.S.C.
§ 103(a) as unpatentable over Moulton in view of Linden is AFFIRMED;
and
claims 1, 21-64, 78, 81, 82, 84, 94, 96, 108, and 109 under 35 U.S.C.
§ 103(a) as unpatentable over the admitted prior art in the Drawings and
Specification of the ‘537 Patent in view of Moulton is AFFIRMED.
The Examiner’s decision to reject appealed claims 1-64, 78, 81, 82,
84, 94, 96, 108, and 109 is therefore AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

MAT

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