Ex Parte Jeong

Patent Trial and Appeal Board

Feb 8, 2016

12010868 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/010,868 01/30/2008
8439 7590 02/10/2016
ROBERT E BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, DC 20006-1004
FIRST NAMED INVENTOR
Dong-Ho Jeong
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.
P58442 1076
EXAMINER
GILLIAM, BARBARA LEE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
02/10/2016 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):
rebushnell@aol.com
mail@rebushnell.com
info@rebushnell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG-HO JEONG1
Appeal2013-010684
Application 12/010,868
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-7, 15-1 7, 19, and 2 0. An oral hearing was held on January
12, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Samsung SDI Co.,
Ltd. App. Br. 3.
Appeal2013-010684
Application 12/010,868
BACKGROUND
The invention relates to a current collector for the electrode of a
battery. Spec. iJ 2; Claim 1. Claim 1 is reproduced below from page 32
(Claims Appendix) of the Appeal Brief:
1. An electrode for a battery, comprising:
a thin plate current collector; and
an active material layer coated on the current collector, the
current collector including a coated current collector part and an
uncoated current collector part adjacent to the coated current
collector part, both collector parts being arranged on a top
surface of the current collector,
wherein the uncoated current collector part has a yield stress
less than that of the coated current collector part, and
wherein when the yield stress of the coated current collector
part is a 1 and the yield stress of the uncoated current collector
part is 02, the condition of l.5:Sal/a2:S 7 is satisfied.
EVIDENCE RELIED ON BY THE EXAMINER
Omori et al.
Takayuki et al.
JP 2000-251942
JP 2004-127799
Sept. 14, 2000
Apr. 22, 2004
D. Tabor, The Hardness and Strength of Metals, 79 J. Institute of Metals
1294 (1951).
ANALYSIS
The Examiner rejected claims 1-3, 5-7, 15-17, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Omori in view ofTakayuki, as
evidenced by Tabor.2 The Appellant does not argue the claims separately,
2 In the Final Action, the Examiner relied on Omori in view of Takayuki as
evidenced by U.S. Patent No. 6,827,796. Final Act. 3. In the Answer, the
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so the claims stand or fall together. 37 C.F.R. § 41.37(c)(l)(iv). We treat
claim 1, reproduced above, as representative of the rejected claims.
The Examiner found that Omori teaches each element of claim 1
except the specific yield stress ratio of l.5:Sal/a2:S 7. Ans. 3. The Examiner
found that Takayuki teaches an electrode current collector with coated and
uncoated portions in which the border between the portions is annealed,
resulting in a Vicker's hardness of the annealed boundary portion of 30-50
and a Vicker' s hardness of the coated portion of 60-100. Id. The Examiner
also found that "Vicker's hardness is directly proportional to yield stress,"
meaning that "the ratio of yield stress of the coated part to the border part [of
Takayuki] would be 1.2-3.33 ... which would significantly overlap the
claimed range." Id. at 3--4. The Examiner further found that, similar to the
Appellant's claimed invention, Takayuki "teaches the purpose of annealing
is to prevent breaking ... and to achieve high capacity and high reliability of
the battery." Id. at 4. The Examiner concluded that it would have been
obvious "to anneal the border of the non-coated part" of Omori's current
collector "to provide the yield stress relationship as taught by Takayuki
because this would prevent breaking by charging and discharging, and
achieve high capacity and high reliability of the battery." Id.
The dispute before us is whether Vicker' s hardness is sufficiently
proportional to yield stress such that a person of ordinary skill in the art
Examiner stated that, in an Advisory Action dated January 2, 2013, the
rejection was modified to rely on Tabor instead of the '796 patent. Ans. 2.
The Answer denominated the ground of rejection as a new ground of
rejection because it relies on Tabor instead of the '796 patent. Id. The
Appellant has elected to maintain the appeal and address Tabor in the Reply
Brief rather than to reopen prosecution. See generally Reply Br.
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would have understood the current collector of Omori as modified by
Takayuki to possess the claimed yield stress ratio. See App. Br. 12-30. In
support of the finding that Vicker' s hardness and yield stress are directly
proportional for the compositions of Takayuki and Omori, the Examiner
relied on Tabor. Ans. 5-6. Tabor teaches that, "[fJor metals which do not
work-harden appreciably, the hardness value for ... the Vickers indenter is
approximately three times the yield stress." Tabor at 17. The Examiner
found that Tabor teaches that copper and aluminum-the metals relevant to
Omori's current collector-do not work harden appreciably, and that the
"Tabor relationship" (i.e., direct proportionality of Vicker's hardness to
yield stress) applies to the metals of the current collector of Omori. Ans. 5-
6. Those findings, along with the resulting finding that the Vicker' s
hardness ratio of Takayuki (1.2 to 3.33) would correspond to a yield stress
ratio that overlaps with the claimed range of 1.5 to 7, shifted the burden to
the Appellant to show otherwise. Cf In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) ("[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not."); In re Best, 562 F.2d 1252, 1255
(CCPA 1977) (similar).
In support of the position that a person of ordinary skill would not
have understood Vicker' s hardness to be directly proportional to yield stress,
the Appellant relies on several secondary references, which we discuss in
more detail below. See App. Br. 14-30.3 The Appellant argues, for
3 At the oral hearing, the Appellant raised new arguments that do not appear
in the Appellant's briefs. Our consideration of the record on appeal is
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example, that direct proportionality may be lacking because ( 1) the metals of
Takayuki "may not have reached a limiting fully strain-hardened condition,"
id. at 15; Reply Br. 7-10; (2) Takayuki's test force is only 2 gf, while a
company known as Instron allegedly "warns" that "caution must be used
when trying to compare results" when a force less than 200 g is used, App.
Br. 16; (3) the "yield strength-hardness correlation" may be nonlinear in the
hardness range of the metals used by Takayuki, id. at 17-18; and/or (4)
relationships applicable to bulk metals (such as those of Tabor) may not be
applicable to the thin foils relevant to electrode current collectors, id. at 18-
20.
We are not persuaded by those arguments because they do not
adequately address whether a person of ordinary skill in the art would have
understood the composition of Omori as modified by Takayuki, having a
Vicker's hardness ratio between 1.2 and 3.33, to possess a yield stress ratio
between 1.5 and 7, as claimed. In other words, the Appellant's arguments
focus on whether Vicker' s hardness and yield stress have a precisely linear
relationship. But, as the Examiner explained, "[ e ]ven if the correlation is
nonlinear, Applicant is claiming a 150-700% difference in yield strength
between the annealed part and the non-annealed part." Advisory Act. dated
January 2, 2013; see also Ans. 7. The lower end of the Vicker's hardness
ratio range taught by Takayuki is 1.2. Even if a Vicker' s hardness ratio of
limited to those arguments timely raised in the Appeal Brief. See 37 C.F.R.
§ 41.37(c)(l)(iv) ("[A]ny arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal."); see also 37 C.F.R. § 41.47(e) (providing that new arguments may
not be presented at the oral hearing, except under circumstances not alleged
to be present here).
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1.2 does not equate to a yield stress ratio of precisely 1.2, the yield stress
ratio could be nearly six fold the Vicker' s hardness ratio and still fall within
the scope of claim 1. Similarly, the upper end of the Vicker' s hardness ratio
taught by Takayuki is 3.33. Even if a Vicker's hardness ratio of 3.33 does
not equate precisely to a yield stress ratio of 3.33, that value could be more
than halved or doubled and still fall within the scope of claim 1. Thus, the
critical issue is not whether the relationship between Vicker' s hardness and
yield stress is precisely linear. Instead, one critical issue is whether a person
of ordinary skill in the art would have understood the Vicker' s hardness
ratios taught by Takayuki to correspond to yield stress ratios that overlap the
range of claim 1. The broader and ultimate critical issue is whether a person
of ordinary skill in the art, even in the absence of such understanding, would
have provided Omori with the Vicker' s hardness ratios taught by Takayuki,
thereby naturally and necessarily arriving at yield stress ratios within the
claimed range (as suggested by the Examiner at Ans. 6).
References relied upon by the Examiner and by the Appellant
establish a reasonable expectation that, under certain conditions, Vicker' s
hardness is directly proportional to yield stress, and, therefore, that a
Vicker's hardness ratio would be equal to a yield stress ratio. See, e.g.,
Tabor at 17; Cahoon4 at Table I & Examiner's plot of data attached to
Advisory Action dated January 2, 2013; Pavlina5 at 888 ("Yield strength
4 J.R. Cahoon et al., The Determination of Yield Strength From Hardness
Measurements, 2 Metallurgical Transactions 1979, 1980 (1971).
5 E.J. Pavlina, Correlation of Yield Strength and Tensile Strength with
Hardness for Steels, 17 J. Materials Eng. & Performance 888, 888, 889
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shows a clear linear relationship with the diamond pyramid hardness for the
entire strength range."), Fig. la.
We have considered the evidence relied upon by the Appellant to
show that, under certain conditions, Vicker' s hardness may deviate
somewhat from a linear relationship with yield stress. For example, the
Appellant argues that the direct proportionality described by Cahoon and
Tabor applies only to fully strain-hardened metals, and that the metals of
Omori and Takayuki may not be fully strain-hardened. E.g., App. Br. 15,
Reply Br. 7. But the Appellant does not attempt to quantify how the strain-
hardened vs. non-strain hardened distinction would affect the relationship
between Vicker's hardness and yield stress, despite the fact that Tabor
appears to include teachings relevant to that issue. E.g., Tabor at 15 ("For
materials that work harden ... _[6J By an empirical method it may be shown
that, with the pyramid used in the Vickers test, the indentation increases the
effective yield stress of the metal by an amount equivalent to a strain of
about 8%."). Thus, we are not persuaded that the Appellant's arguments
concerning strain or work hardening establish reversible error in the
Examiner's rejection.
Similarly, the Appellant argues that whether yield strength is directly
proportional to Vicker' s hardness depends on the strengthening mechanism,
and that the strengthening mechanism for Takayuki is different for the
(2008).
6 While Cahoon discusses "strain" -hardened metals and Tabor discusses
"work"-hardened metals, the terms appear to be equivalent. See, e.g., Reply
Br. 7, 12 (using the terms interchangeably).
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different portions of the current collector (i.e., annealed vs. non-annealed).
App. Br. 17 (citing Cahoon at 1981 ("[T]he yield strength could not be
correlated directly with hardness ... but was dependent on the strengthening
mechanism. For a similar hardness, the aged alloys exhibit a consistently
lower yield strength and consistently higher strain hardening coefficient than
the cold worked alloys.")). Again, however, the Appellant fails to quantify
by how much the strengthening mechanism might cause the relationship
between Vicker's hardness and yield stress to deviate from linear, despite
the fact that Cahoon appears to include teachings relevant to that issue. E.g.,
Cahoon at 1981 ("The results presented in Tables I and II show that the yield
strength varies from about H/6 for an alloy with a high strain hardening
coefficient to H/3.4 for an alloy with a low strain hardening coefficient.").
Thus, the Appellant's argument fails to establish that the Vicker' s hardness
ratios taught by Takayuki do not correspond to yield stress ratios that
overlap with the range of claim 1.
Relying on Pavlina, the Appellant argues that the relationship between
hardness and yield stress deviates from linearity at hardness values below
130 DPH. App. Br. 17 (citing Pavlina at 889). Because Takayuki reports
Vicker's hardness values (which, according to the Appellant, are the "same
as DPH") in the range of 30-100, the Appellant argues that the linear
relationship between hardness and yield stress would not hold for Takayuki.
Id. at 18. Pavlina, however, concerns steel rather than aluminum or copper,
and the Appellant has not explained to what extent Pavlina' s findings would
apply to aluminum or copper. Moreover, the Appellant cites no data in
Pavlina obtained at hardness values less than 100, and the Appellant has not
quantified the extent to which the hardness-yield stress relationship would
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deviate from linearity at such hardness values (if at all with respect to
aluminum and copper).
The Appellant also argues that the Vicker's hardness data of Takayuki
is questionable because Takayuki used only 2 grams of force, while Instron
allegedly "warns" that "caution must be used when trying to compare
results" when a force less than 200 g is used. See App. Br. 16. However,
there is no evidence in the record supporting the Appellant's assertion. The
Appellant did not attach a copy of the relevant portion of Instron' s website
to its brief, and the provided web address appears to be invalid, resulting in a
message of "page not found." Thus, we accord no evidentiary weight to the
alleged teaching from Instron. Even if we were to consider that reference,
we would not find it persuasive because, according to the Appellant, Instron
merely "warns" that caution must be used with smaller forces; not that
results obtained using smaller forces necessarily are invalid. See id.
The Appellant relies on a series of references to show that the
mechanical properties of bulk metals do not necessarily apply to
micrometer-scale metal foils. See App. Br. 19-29. For instance, the
Appellant notes that a reference describing a study done on cracking in thin
copper foils concluded that "models and conclusions appropriate for bulk
materials may not be applicable when analyzing foil materials." App. Br.
20-21 (emphasis omitted). However, the Appellant does not adequately
explain how that affects the relationship between hardness and yield stress of
foils. Even if bulk copper were, for example, to crack under different
conditions than copper foil, that fact would fail to establish that the Vicker's
hardness of copper foil is not proportional to the yield stress of copper foil.
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Similarly, the Appellant contends that hardness may not vary with
film thickness, but yield stress does. Id. at 28. The Appellant concludes that
"a strong and/or predictable relationship between yield strength and hardness
for aluminum in the vicinity of a 15 µm film thickness cannot be inferred."
Id. at 28. Based on the Appellant's evidence, it may be true, for example,
that the yield stress of a thick foil or bulk metal should not be used to predict
the hardness of a thin foil. But the Appellant does not adequately explain
why that would necessarily mean that yield stress of a thin foil cannot be
used to predict the hardness of a foil of the same thickness.
Additionally, and as the Examiner explained, because the thickness of
the two portions (annealed and non-annealed) of Takayuki's current
collector is approximately the same, any complications due to foil thickness
would be expected to approximately cancel out. E.g., Advisory Action dated
January 29, 2013, ii 2. While the Appellant suggests that the thickness of the
two portions may not be the same, App. Br. 24, the Appellant identifies
nothing in Takayuki for support, and the portions of Takayuki that identify
charge collector thickness do not appear to suggest that the annealed and
non-annealed portions of the current collector have different thickness. E.g.,
Takayuki ii 29. Similarly, the Appellant contests the Examiner's finding that
complications due to thickness would cancel out even if both portions of the
current collector are the same thickness. App. Br. 25. However, even if
"thickness/grain diameter" do not precisely cancel out, see id., the Appellant
has not established that the impact would be so large as to remove the yield
stress ratio of Omori as modified by Takayuki from the scope of claim 1.
While it does not appear that the references establishing the
relationship between hardness and yield stress used foils, they likewise do
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not appear to establish or suggest that the same (or a similar) relationship
would not apply to foils. In general, the arguments presented by the
Appellant appear to rely largely on speculation that the Tabor relationship
may not directly apply to the materials of Omori and Takayuki, e.g., App.
Br. 15 ("yield stresses ... will not necessarily be the same as the ratio of
their Vicker's hardnesses," "stress condition ... may not have reached a
limiting fully strain-hardened condition," (emphasis added)), 17 ("strain
hardening coefficient could vary ... " (emphasis added)), but, as explained
above, the Appellant fails to quantify any expected deviation in order to
establish that the current collector of Omori as modified by Takayuki would
not fall within the scope of claim 1.
As explained above, the Examiner found that the Vicker' s hardness
ratio range disclosed by the prior art would correspond to a yield stress ratio
range that overlaps the claimed range even if the relationship between
Vicker' s hardness and yield stress is not precisely linear. See Advisory Act.
dated January 2, 2013 ("Even if the correlation is nonlinear, Applicant is
claiming a 150-700% difference in yield strength between the annealed part
and the non-annealed part."). The Appellant's only response to that finding
is that the relationship may not be precisely linear "for metal foils with
thicknesses in the micron range." App. Br. 22. Because the Appellant has
not attempted to quantify any expected deviation, this record presents no
basis to reject the Examiner's finding that the Vicker's hardness ratio range
disclosed by the prior art would correspond to a yield stress ratio range that
overlaps the claimed range even if the relationship is not precisely linear.
For the reasons set forth above, a preponderance of the evidence
supports the Examiner's finding that, for the compositions of Omori and
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Takayuki, Vicker's hardness is sufficiently proportional to yield stress that a
Vicker's hardness ratio of 1.2 to 3.33 equates to a yield stress ratio that at
least partially overlaps the claimed range of 1. 5 to 7. Therefore, we agree
with the Examiner that a current collector as defined by claim 1 would have
been obvious in light of Omori and Takayuki. See In re Peterson, 315 F .3d
1325, 1329 (Fed. Cir. 2003) ("A prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art."); cf In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-3, 5-7, 15-1 7, 19,
and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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