Ex Parte Birke et al

Patent Trials and Appeals Board

Aug 3, 2018

12597377 - (D) (P.T.A.B. Aug. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/597,377 06/14/2010
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
08/07/2018
FIRST NAMED INVENTOR
Peter Birke
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1800P81822WOUS 9656
EXAMINER
LAIOS, MARIA J
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
08/07/2018 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BIRKE,
MICHAEL KELLER, KAZUHIRO TAKAHASHI,
HIDEO ABE, KIYOKO ABE,
and KAZUNORI OZAWA
Appeal2017-010285
Application 12/597,377
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 18-36 of Application 12/597 ,377 under
35 U.S.C. § 103(a) as obvious. Final Act. (December 16, 2016). Pursuant to
35 U.S.C. § 134(a), Appellants 1 seek reversal of these rejections. We have
jurisdiction. 35 U.S.C. § 6(b ).
1 Temic Automotive Electric Motors GmbH and Enax Inc. are identified as
the real parties in interest. Appeal Br. 2.
Appeal2017-010285
Application 12/597,377
For the reasons set forth below, we reverse the rejections that formed
the basis for this appeal. We, however, reject all of the '377 Application's
claims by relying upon findings of fact and conclusions of law that differ
from those that form the basis of the Examiner's rejections. Accordingly,
we designate this opinion as containing new grounds of rejection.
BACKGROUND
The '377 Application describes an electrochemical cell and an energy
storage assembly comprising a plurality of such electrochemical cells. Spec.
1 :20-21. The energy storage assembly is said to provide a high current
carrying capacity, good current and thermal distribution, and resistance to
mechanical stress. Id. at 2:21-31.
Claim 18 is representative of the '377 Application's claims and is
reproduced below from the Appendix of Claims to the Appeal Brief:
18. Electrochemical cell with a pair of electrodes arranged as
a stack of flat electrode films separated by a separator film,
wherein electrode films of each electrode are electrically
connected with each other through inner electrode conductors,
wherein the inner electrode conductors of the electrodes
are arranged on opposite sides of the electrochemical cell in an
electrode material-free area of the electrode films,
wherein each inner electrode conductor is connected with
the respective electrode films through a predetermined number
of weld points in each electrode,
wherein each inner electrode conductor comprises a
predetermined number of openings in which coupling elements
are set to connect each inner electrode conductor with an outward
electrode conductor,
wherein each inner electrode conductor has an elongated
shape having a length, each inner electrode conductor further
having end sections arranged on opposite sides along a length of
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Application 12/597,377
the inner electrode conductor and a middle section between the
opposing end sections, and at least one of the openings is defined
in each end section and in the middle section of each inner
electrode conductor, and
each of the openings is defined between a respective pair
of weld points.
Appeal Br. 10.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 18-35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Loustau2 and Ng. 3 Final Act. 2;
Answer 2.
2. Claims 34 and 36 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination ofLoustau, Ng, 4 and Grand. 5 Final Act.
6; Answer 5.
DISCUSSION
Appellants argue for the reversal of these rejections on the basis of
limitations present in independent claim 18. See Appeal Br. 4--8; Reply Br.
2 US 5,558,681, issued Sept. 24, 1996.
3 US 2002/0081489 Al, published June 27, 2002.
4 The Examiner's statement of Rejection 2 omits Ng and refers only to
"Loustau as applied to claim 30." Final Act. 6. The grounds of Rejection 2,
however, refer to "modified Loustau"; the Examiner proposed modifying
Loustau with Ng in rejecting dependent claim 30. Id.; see also id. at 2-5.
Accordingly, we have revised the Examiner's statement of Rejection 2 to
include all of the evidence relied upon by the Examiner.
5 US 2008/0169138 Al, published July 17, 2008.
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Application 12/597,377
1-3. We, therefore, limit our analysis to claim 18. Dependent claims 19-36
will stand or fall with claim 18. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 18. The Examiner rejected claim 18 as unpatentable over the
combination of Loustau and Ng. Final Act. 2; Answer 2.
The patent examiner bears the initial burden of establishing a prima
facie case that an application's claims would have been obvious based upon
what was known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed.
Cir. 1990).
Here, the Examiner found that Loustau teaches an electrode for an
electrochemical cell comprising "metal strip/[]inner electrode conductor[ s ]"
4, 5 each "spot welded along the length of the electrode" to uncoated
portions of core 2. Answer 2 (citing Loustau Title; Figs. 1, 2b; 3: 14--17,
3 :40-45). The Examiner further found that Loustau teaches or suggests each
element of the claimed electrochemical cell, except "the specifics of the cell
having a pair of electrodes with the inner electrode conductors at opposite
sides of the cell, [nor] the openings in the inner electrode conductor."
Answer 2.
The Examiner, however, relied upon Ng's disclosure for teaching the
elements missing from Loustau. Id. at 2-3; see Ng Figs. 4, 5, 6, 6a. The
Examiner found, inter alia, that Ng teaches that "communication along the
entire edge of the formed electrodes on the conductive substrate with a
conductive edge portion of the substrate, provide[s] for maximum current
flow in and out of the battery as well as reducing thermal concerns in high
current applications." Answer 3 (citing Ng Abstract). Thus, the Examiner
determined that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to form a battery [with] the electrodes
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Application 12/597,377
at opposite side[s] of the cell and include coupling elements and
an outward electrode conductor because Ng teaches this type of
electrical connection along the entire edge provide for maximum
current flow in an out of the battery as well as reducing thermal
concerns in high current applications.
Answer 3--4 ( emphasis added).
Appellants argue that the rejection of claim 18 should be reversed for
five reasons: (1) Loustau's strips 4, 5 cannot disclose or suggest inner
electrode conductors because they are on the outer surfaces of the cell
(Appeal Br. 5; Reply Br. 1-2), (2) from this outer location, Loustau's strips
cannot provide an electrical connection between electrode films (Appeal Br.
5; Reply Br. 2), (3) "the Examiner makes no mention of actually modifying
Loustau to include the claimed openings," which are allegedly taught by Ng
(Appeal Br. 6), (4) there is no need to modify Loustau to include Ng's
openings because Loustau already achieves electrical communication along
the entire length of strips 4, 5 (id. at 6-7; Reply Br. 3), and (5) such
openings are superfluous in light of the through-holes already present in
Loustau's strips (Appeal Br. 7; Reply Br. 2-3). We need only address the
second and fourth of these arguments.
First, Appellants' argument (2) is not persuasive because it attacks
Loustau individually rather than addressing the teachings suggested by the
combination of Loustau and Ng.
The Examiner explained these teachings by referring to Ng's Figures
4 and 6, as annotated by the Examiner (Answer 8), below:
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Appeal2017-010285
Application 12/597,377
~1,,
;,/'> ./_., ... -" ... . ...:,
\ ..;.\ '· ·1 ,.i:•"
,11'k ~ .,· '-,. ,,..,..-<:J\ .
/·:;'" )\};: \
,,:-;\\j . --'
,~~ ,:~
1~~i I
\t --------~
' 1 I Uncoated portions of l
[ electmdes located at outer I
! edge !
L ______________________________________________________________________ ,J
I Inner conductor.·
; ,#:.. " tf ... ~ {• ,, \.~-iii
Jo.". '
f·)(,~
Figures 4 and 6 of Ng illustrate a plurality of electrodes, having
uncoated edges on opposite sides, which are stacked by attachment to rails
mated to positive and negative conducting electrode edges.
As the Examiner found,
Loustau discloses that metal strips can be attached to the
uncoated portion of the cell while Ng discloses that the uncoated
portions are found at opposite ends of the cells in an assembly
(see [Ng Fig. 6]). Thus the combination of references discloses
that [Loustau' s] metal strips/inner conductors are located at
opposite ends of the cell.
Answer 7-8. The Examiner correctly reasoned that "an electrical connection
must occur[] at portions 42 and 40 ([due to Ng's] uncoated/[Loustau's]
metal strip portions being pressed together) in order for an electrical
connection to exist between the conductor and the edge portions." Answer 9
(Ng ,r 62). Thus, we agree with the Examiner that the teachings of the
combination of Loustau and Ng would have reasonably suggested that
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Application 12/597,377
electrode films of each electrode are electrically connected with each other
through metal strips/inner conductors located at opposite ends of the cell.
Second, Appellants' argument (4) is persuasive.
Referring to the Examiner's proffered reason to combine the
references (Answer 3--4), Appellants argue that "Loustau does not require
any modification to achieve 'communication along the entire edge of the
formed electrodes' ... because [Loustau' s] strips 4 and 5 ... already
achieve" such communication "through compression and spot welding,
and/or through a nickel retaining core." Appeal Br. 7.
The Examiner responds by asserting that Ng teaches that "having a
connection[] along the entire length of the edge is beneficial and this
connection is taught as the coupling elements to the electrical conductor."
Answer 10 (citing Ng, ,r 62).
The Examiner's reasoning, however, does not adequately explain how
Loustau' s communication along the top edge's entire length lacks the
alleged advantage ofNg's communication along the side edges' entire
length. In other words, the Examiner's reasoning fails to explain why a
person of ordinary skill in the art would have chosen to include Loustau's
electrode strips 4, 5 at opposite sides ofNg's cell. See e.g., KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007) ("[I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.");
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.").
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Application 12/597,377
For these reasons, we cannot sustain the Examiner's rejections of
claims 18-3 6.
NEW GROUND OF REJECTION
As discussed above, we cannot sustain the rejections of claims 18-36
of the '377 application as obvious over the combination of Loustau and Ng
as set forth by the Examiner. For the reasons set forth below, however, we
reassert the rejections of claims 18-36 as obvious over the combination of
Ng and Loustau, wherein the former is modified in view of the latter. 6
Claim 18. We conclude that, at the time of the invention, the subject
matter of claim 18 as a whole would have been obvious to a person of
ordinary skill in the art in view of the combination of Ng and Loustau. We,
therefore, reject claim 18 pursuant to 35 U.S.C. § 103(a).
Ng describes: (i) a battery having a plurality of flat electrodes and
electrodes of opposite polarities 22, 28 at opposite sides of the cell having an
elongated shape with a length, e.g., Fig. 4; ,r,r 57-58, (ii) a pair of electrodes
14, 24 arranged as a stack of flat electrode films separated by a separator
film 30, wherein electrode films of each electrode are electrically connected
with each other through inner electrode conductors 22, 28, e.g., ,r,r 41, 58,
(iii) wherein the inner electrode conductors of the electrodes are arranged on
opposite sides of the electrochemical cell in an electrode material-free area
of the electrode films, e.g., Figs. 4---6, ,r 57, (iv) each inner electrode
conductor 22, 28 having a predetermined number of openings in which
coupling elements 38 are set to connect each inner electrode conductor 22,
6 The new ground of rejection renders Appellants' arguments (1), (3), and
(5) moot.
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Application 12/597,377
28 with an outward electrode conductor 36, e.g., Figs. 4---6, and (v) each
inner electrode conductor 22, 28 having end sections and a middle section
and openings in each of the sections, e.g., Fig. 6a includes one hole in each
of the top, middle, and bottom sections; Fig. 6 includes two holes in each of
the top, middle, and bottom sections. Ng, however, does not describe the
portions of claim 18 that recite limitations requiring a connection between
each inner electrode conductor and the respective electrode films through a
predetermined number of weld points in each electrode.
As discussed above, there is no dispute that Loustau's strips 4, 5
achieve electrical communication through compression, spot welding, and a
nickel retaining core. Appeal Br. 7; Answer 2 ( citing Loustau Title; Figs. 1,
2b; 3:14--17, 3:40-45); see also Answer 9. Loustau also discloses that spot
welds provide mechanically strong attachments at the bond between the
electrode core and the electrically connected rigid metal conductor. See
Loustau 1: 18-29.
In view of these descriptions, a person of ordinary skill in the art
would have been motivated to modify Ng's inner electrode conductors 22,
28 with Loustau's metal strips 4, 5 comprising spot welds 6 because Loustau
teaches that it was known that mechanically strong attachments may be
provided by spot welds at the bond between the electrode core and
electrically connected rigid metal conductor. 7 Thus, modifying Ng' s battery
cell to incorporate Loustau's metal strips comprising weld points would
7 We note that Ng also teaches welding to facilitate electrical communication
within a battery cell. Specifically, Ng teaches welding electrode tabs 21 to
enable transmission of electrical current from active surface areas of
opposite polarities 20, 26 and the electrolyte-porous separator 30. See Ng
if 54.
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have provided the requisite connection between the inner electrode
conductors and the respective electrode films.
Although Loustau does not expressly describe including openings
between a respective pair of weld points, Loustau's welds and Ng's
openings are both shown to be equidistant from each other, respectively.
Compare Loustau Figs. 1, 2b with Ng Fig. 6. Therefore, locating each of
Ng's openings between a respective pair of Loustau's weld points would
have been well within the ordinary level of skill in the design of
electrochemical cells.
In sum, we conclude that the differences between the claimed
invention and the descriptions and suggestions provided by the combination
of Ng and Loustau would have been obvious to a person of ordinary skill in
the art at the time of the invention. We, therefore, reject claim 18 under
§ 103(a).
With respect to dependent claims 19-36, we adopt the Examiner's
findings of fact regarding the additional limitations added in each of these
dependent claims. See Answer 3---6. Appellants have not challenged these
findings in this appeal.
CONCLUSION
As explained above, although we reverse the rejections of claims 18-
36 as set forth in the Final Action, we reject claims 18-36 over the
combination of Ng and Loustau, either with or without Grand. To protect
Appellants' procedural rights, we designate our opinion as setting forth a
new ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b), which provides that "[a] new ground of rejection
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Application 12/597,377
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, Appellants
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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