Ex Parte Hisamitsu et al

Board of Patent Appeals and Interferences

Mar 31, 2010

10640029 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YASUNARI HISAMITSU,
TAKAAKI ABE, TAKANORI ITO, OSAMU SHIMAMURA,
TAKAMITSU SAITO, HIDEAKI HORIE, and
HIROSHI SUGAWARA
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Appeal 2009-003735
Application 10/640,029
Technology Center 1700
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Decided: March 31, 2010
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Before CHARLES F. WARREN, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003735
Application 10/640,029

A. Introduction1
Yasunari Hisamitsu, Takaaki Abe, Takanori Ito, Osamu Shimamura,
Takamitsu Saito, Hideaki Horie, and Hiroshi Sugawara (“Hisamitsu”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 1
and 8-10.3 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to an electrical cell [1],4 such as
the one depicted in Figure 2 of the 029 Specification, which is reproduced
on the following page. External electrical connections to an external load
and to internal leads [4 and 6] to the positive and negative stacked electrodes
(2A and 2B, respectively, which are separated by interposed separators 2C)
are made to common electrical conductors, referred to in
the 029 Specification as a “positive tab” [5] or a “negative tab” [7],
respectively. (Spec. 9, ll. 14-23.) The tabs are said to be thicker at the
portions [5A, 7A] where the internal leads are connected than at the external
portion of the tab. (Id. at 10, l. 18-11, l. 1.) The extra thickness is said to
provide more heat capacity, so current drawn from the cell does not heat up

1 Application 10/640,029, Laminate Cell, Assembled Battery, Battery
Module and Electric Vehicle, filed 14 August 2003, claiming the benefit of a
Japanese application filed 26 August 2002. The specification is referred to
as the “029 Specification,” and is cited as “Spec.” The real party in interest
is listed as Nissan Motor Co., Ltd. (Appeal Brief, filed 25 February 2008
(“Br.”), 1.)
2 Office action mailed 20 March 2007 (“Final Rejection”; cited as “FR”).
3 Claims 3-7, 11, 13, 14, 16, 17, 19, and 20 have been withdrawn from
consideration and are not before us. (FR 1.)
4 For clarity, labels are presented in bold font throughout this opinion
regardless of their presentation in the original document.
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Application 10/640,029

that internal junction region as much as current drawn through a tab of
uniform thickness. (Spec. 11, ll. 7-16.) As a result, according to the 029
Specification, the encapsulating walls [3a, 3b] of the cell, which keep the
electrode plates and electrolyte inside, are less prone to melt and thereby
short the metal component of the walls to the positive and negative tabs.
The electrical cells are said to be useful to power electric vehicles. (Spec. 1,
l. 14.)
Figure 2 of the 029 Specification is reproduced below:

{Figure 2 is said to show an electrical cell}
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal (annotations added):
1. A laminate cell, comprising:
a power generating element [1] formed by sequentially
stacking positive electrode plates [2A] and negative
electrode plates [2B] while interposing separators [2C]
therebetween;
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Application 10/640,029

a positive tab [5] connected to the positive electrode
plates [2A] through a plurality of positive leads [4];
a negative tab [7] connected to the negative electrode
plates [2B] through a plurality of negative leads [6];
and
a cell package [3] formed of a metal composite film, the
cell package hermitically sealing the power generating
element and an electrolyte,
wherein said positive and negative tabs [5, 7]
are thicker at a portion [5a, 7a] where said
positive and negative leads [4, 6] are connected to
the positive and negative tabs, respectively,
than other portions of the positive and negative
tabs extending outside the laminate cell
so that a heat capacity of the portions where said
positive and negative leads are connected is made
larger than that of the other portions thereof.
(Claims App., Br. 17, paragraphing, indentation, and bracketed labels to
Fig. 2, shown supra, added.)
Independent claims 8, 9, and 10 are drawn to a battery, a battery
module, and an electric vehicle, respectively, comprising a cell as recited in
claim 1.
The Examiner has maintained the following grounds of rejection:5
A. Claims 1 and 8-10 stand rejected under
35 U.S.C. § 102(b), alternatively under
35 U.S.C. § 103(a) in view of Gross.6

5 Examiner’s Answer mailed 20 May 2008. (“Ans.”).
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Application 10/640,029

B. Claims 1 and 8-10 stand rejected under
35 U.S.C. § 102(b), alternatively under
35 U.S.C. § 103(a) in view of Kaneda.7
Hisamitsu contends that the Examiner erred in reading the positive
and negative tabs recited in the claims on regions of cells described by Gross
[element 30 in Gross, Figure 7] and by Kaneda [unlabeled central element in
Kaneda, Figure 12]. In contrast, Hisamitsu argues, the 029 Specification and
claims, as well as the references, clearly recite that the tabs and the leads are
separate elements. Hisamitsu argues the same basis for the patentability of
claims 8-10 (Br. 9-11; 14-15), and does not argue any distinct reason for
separate patentability in the principal Brief on appeal (id.).
The issue dispositive of this appeal is the meaning of the disputed
language of claim 1, italicized supra.

6 Oliver J. Gross and Peter Guggenheim, Battery Apparatus and Method of
Forming a Battery Apparatus, U.S. Patent Application Publication
US 2002/0081491 A1 (27 June 2002)
7 Masaaki Kaneda et al., WO 00/59063 (2000). Masaaki Kaneda et al.,
Laminate Sheath Type Battery, U.S. Patent 6,743,546 B1 (1 June 2004), the
patent that issued from the national stage of the WO application, has been
used as a translation. The Examiner states that the omission of the § 103
basis from the “title” of the rejection was a typographical error. (Ans. 15.)
As Hisamitsu responded substantively to a rejection for obviousness in view
of Kaneda (Br. 14), the oversight was harmless.
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Application 10/640,029

B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As the Appellant, Hisamitsu bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
proceedings to appellate review of civil cases in this respect. . . . . [T]he
party seeking reversal normally must explain why the erroneous ruling
caused harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed.
Cir. 2010), (discussing the role of harmless error in appeals from decisions
of the Board of Patent Appeals and Interferences (“Board”)). Arguments not
timely made have been waived. 37 C.F.R. § 41.37(c)(1)(vii), second
sentence; cf. In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (arguments
not first raised in the brief to the Board are waived on appeal to the court).
Our reviewing court has instructed repeatedly that, during
prosecution:
the verbiage of the proposed claims [is given] the broadest
reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The court has also
instructed that “the judge's task is not to decide which of the adversaries is
correct. Instead the judge must independently assess the claims, the
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Appeal 2009-003735
Application 10/640,029

specification, and if necessary the prosecution history, and relevant extrinsic
evidence, and declare the meaning of the claims." Exxon Chem. Patents,
Inc. v. Lubrizol Corp., 64 F.3d 1553, 1556 (Fed. Cir. 1995). Thus, when we
interpret claims, we give no deference to the arguments of either the
Examiner or the Appellants.
All claims stand or fall with claim 1, the critical language of which
reads:
wherein said positive and negative tabs are thicker at a
portion where said positive and negative leads are connected
to the positive and negative tabs, respectively, than other
portions of the positive and negative tabs extending outside
the laminate cell.
(Claims App., Br. 17.)
We note initially that neither the claim nor the 029 Specification
provides a formal definition for the term “tab.” We also note that
the 029 Specification ends with the standard disclaimer that “[a]lthough the
invention has been described above by reference to certain embodiments of
the invention, the invention is not limited to the embodiments described
above [and obvious variations] will occur to th[o]se skilled in the art, in light
of the teachings.” (Spec. 31, ll. 11-14.)
It has not escaped our notice that the original disclosure indicates that
in the embodiment shown in Figure 2, the positive and negative tabs are
formed from a metal plate. (Id. at 10, ll. 7-8.) We have also noted that the
embodiment shown in Figure 3 is described as having tabs with a “junction
portion” that is “made larger than the thickness T2 of the other portion of the
. . . tab.” (Id. at 10, ll. 20-23.) These embodiments are highly suggestive.
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However, the term “junction portion is not used in appealed claim 1. We
shall not read limitations from the specification into to claims. Consistent
with our refusal to read the claims narrowly, the 029 Specification also
teaches that “a method for increasing the thicknesses of the junction
portions 5a and 7a so as to be larger than those of the other portions is not
particularly limited.” (Id. at 11, ll. 17-19.) In addition to forming the plates
serving as the positive and negative tabs with a thicker portion, the
029 Specification suggests that the plates may be thickened by applying a
metal paste to the region to be defined as the junction portion.
(Id. at ll. 23-26.)
While we commend the Examiner’s attempts to read the claims
broadly, we find no language that supports reading the claims as defining the
tabs by a process of making (FR 3; Ans 4). At the same time, however, we
find no language in the claims or in the supporting Specification that
supports Hisamitsu’s arguments (Br., para. bridging 7-8) that the claim
language necessarily excludes structures such as the one shown in Gross,
Figure 6, shown below:

{Gross Figure 6 shows a electrical cell}
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Appeal 2009-003735
Application 10/640,029

Gross shows an electric cell having anode counter electrodes 16 having
anode current collectors 20, with integral extensions 22, separated by
separators 18 from cathodes 14 having cathode current collectors 24, with
integral extensions 26 (shown in Figure 7, not reproduced here). (Gross 2,
¶¶ [0019]-[0020].) According to Gross, the anode current collectors are
made from copper mesh and the anode extensions are made from non-mesh
copper, while the corresponding cathode structures are made from
aluminum. (Id. at ¶ [0020].) The respective extensions are said to be made
from “same-sized tabs which overlap for the anode at a gathering 28 and for
the cathode at a gathering 30.” (Id.) The anode terminal member 32 and the
cathode terminal member 34 preferably comprise the same material as the
corresponding extension, and the extensions and the terminal members are
welded together. (Id.)
The same arguments apply to Kaneda, which describes, in Figure 12,
shown below:

{Kaneda Figure 12 is said to show an electrical cell}
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Appeal 2009-003735
Application 10/640,029

a similar structure, in which the current collector leads have been welded to
the tab portion [14]. (FR 6, first full para.; Ans. 8, first full para.)
In making this determination, we find the description in
the 029 Specification that the thickening may be accomplished by applying a
metal paste (Spec. 11, ll. 23-26) particularly indicative of the scope of the
claims. The paste is not described as being permanent, nor is its location
relative to the leads defined. In contrast, as the Examiner points out (and as
Hisamitsu does not contest), “once the two components of the same material
are welded together, they become integral.” (Ans. 12, ll. 3-4.) Thus, the
non-mesh copper anode tab extensions, when welded to the non-mesh
copper anode terminal member, become an integral portion of the terminal
member. The present record indicates that that portion is thicker than the
portions that extend outside the laminate cell. Hisamitsu does not contest
that the thicker portions shown in Gross and in Kaneda would have, as the
Examiner finds, a larger heat capacity as required by the claims.
Hisamitsu has not shown that present claim 1 sufficiently defines the
terms used in the claim to distinguish the claimed subject matter from either
Gross or Kaneda. As the Federal Circuit stated in a similar situation,
[w]e decline to attempt to harmonize the applicants'
interpretation with the application and prior art. Such an
approach puts the burden in the wrong place. It is the
applicants’ burden to precisely define the invention, not the
PTO's. See 35 U.S.C. § 112 ¶ 2 (“The specification shall
conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the applicant
regards as his invention.”).”
Morris, 127 F.3d at 1056 (Fed. Cir. 1997).
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Appeal 2009-003735
Application 10/640,029

The Examiner argues that the other limitations of the other
independent claims would have been obvious. (FR para. bridging 4-5.)
Hisamitsu does not argue otherwise. (E.g., Br. 14, first full para.)
Hisamitsu’s criticism (Reply Br. 4), that the Examiner failed to give
adequate weight to the preambles does not identify harmful error because the
Examiner explained a reasonable basis for concluding that the additional
structures would have been obvious to persons having ordinary skill in the
art. Hisamitsu has not come forward with argument supported by evidence
of record that responds to these arguments.
D. Order
We AFFIRM the rejection of claims 1 and 8-10 under
35 U.S.C. § 102(b), alternatively under 35 U.S.C. § 103(a) in view of Gross.
We AFFIRM the rejection of claims 1 and 8-10 under
35 U.S.C. § 102(b), alternatively under 35 U.S.C. § 103(a) in view of
Kaneda.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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