Ex Parte Frisk et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613353453 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 13/353,453 01/19/2012 SIMON FRISK TK5130USNA 1048 23906 7590 01/03/2017 E I DU PONT DE NEMOURS AND COMPANY LEGAL PATENT RECORDS CENTER CHESTNUT RUN PLAZA 721/2340 974 CENTRE ROAD, P.O. BOX 2915 WILMINGTON, DE 19805 EXAMINER DOVE, TRACY MAE ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): PTO-Legal.PRC@dupont.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIMON FRISK, NATALIA V. LEVIT, and PANKAJ ARORA Appeal 2015-006579 Application 13/353,453 Technology Center 1700 Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1-22.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this decision, we refer to the Final Office Action mailed September 24, 2014 (“Final Act.”), the Appeal Brief filed December 30, 2014 (“App. Br.”), the Examiner’s Answer mailed June 11, 2015 (“Ans.”), and the Reply Brief filed June 24, 2015 (“Reply Br.”). 2 Appellants identify the real party in interest as E.I. du Pont de Nemours and Company. Appeal Brief filed (“App. Br.”), 1. 3 An additional, prior pending rejection of claims 1-21 under 35 U.S.C. §112 for indefmiteness (Final Act. 2-3) has been withdrawn (Ans. 3). Appeal 2015-006579 Application 13/353,453 The claims4 are directed to separators for electrochemical cells, in particular, separators having a shutdown function and their use in batteries, especially lithium ion batteries. Spec. 1,11. 10-13. Claim 1, reproduced below with key disputed limitations highlighted in italicized text, is illustrative of the claims on appeal. 1. A separator for an electrochemical cell comprising nanofibers made of an organic polymeric material, and arranged into a nonwoven web, and further comprising a first set of thermoplastic particles coated onto the surface of the nonwoven web in the form of a coating that covers at least a portion of the surface of the web, wherein the nonwoven web has a mean flow pore size of between 0.1 microns and 5 microns, and the thermoplastic particles have a number average particle size that is at least equal to the mean flow pore size. DISCUSSION Claims 1-22 stand rejected under 35 U.S.C. § 102(b) as anticipated by Treger (US 5,091,272, issued Feb. 25, 1992) (hereinafter “Treger”). Treger discloses a heat sensitive separator for electrochemical cells. Treger 1:4—6. The Examiner finds that Treger teaches a separator for electrochemical cells comprising a porous heat sensitive film comprising a microporous layer and a layer of heat-fusible, polymer particles coated on at least one side of the microporous layer. Final Act. 3, citing Treger 1:55-60. 4 We note that U.S. patent application 13/353,468, which relies on the same two provisional applications for priority benefit with claims relating to an electrochemical cell separator comprising nanofibers arranged into a nonwoven web and a layer of thermoplastic particles, is currently on appeal (Appeal No. 2015-007253). The claims in this related application stand rejected over Hennige et al., US 2008/0248381 Al, in view of Arora et al., US 2008/0070463 Al. 2 Appeal 2015-006579 Application 13/353,453 The Examiner finds that Treger teaches that microporous films such as Celgard™ 2400 and Celgard™ 2500 may be used as the microporous layer in its separator. Ans. 3. The Examiner contends that Celgard™ 2400 and Celgard™ 2500 inherently have a nonwoven structure, as evidenced by column 4, lines 29-34 of US 6,358,649 B1 (issued Mar. 19, 2002), column 23, lines 17-20 of US 6,190,800 B1 (issued Feb. 20, 2001), column 6, lines 62-65 of US 5,985,475 (issued Nov. 16, 1999), and column 6, lines 18-22 of US 5,733,677 (issued Mar. 31, 1998). Ans. 3-4. Appellants argue that the polymeric material, for example Celgard™ 2400 and Celgard™ 2500, of Treger’s separator is not a nonwoven web, but is instead a microporous “film,” and thus, does not inherently contain fibers “arranged into a nonwoven web” as in claim 1. App. Br. 6; Reply Br. 5. “It is axiomatic that for anticipation, each and every claim limitation must be explicitly or inherently disclosed in the prior art.” In re NTP, INC., 654 F.3d 1279, 1302 (Fed. Cir. 2011) (citations omitted). Anticipation by inherency requires that any material missing from the prior art must necessarily be present in the reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirgv. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). Appellants’ argument grounded on the recitation of “nonwoven web” is persuasive of reversible error in the Examiner’s rejection. As Appellants point out, “nonwoven” is defined in their Specification as “a web including a multitude of essentially randomly oriented fibers where no overall repeating 3 Appeal 2015-006579 Application 13/353,453 structure can be discerned in the arrangement of fibers.” Reply Br. 4-5, citing Spec.5,11. 26-28. On the record before us, the Examiner has not established that the microporous films disclosed in Treger, for example Celgard™ 2400 and Celgard™ 2500, necessarily and inevitably are formed of, or include any, fibers, and thus, we cannot say that Treger necessarily or inherently teaches a polymeric material arranged into a nonwoven web within the scope of the claims. Accordingly, we cannot sustain the Examiner’s anticipation rejection based on Treger. DECISION For the above reasons, the Examiner’s decision rejecting claims 1-22 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation