Ex Parte Kako et al

Patent Trial and Appeal Board

Nov 29, 2017

14307421 (P.T.A.B. Nov. 29, 2017)

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.
14/307,421 06/17/2014 Tomonori Kako G140046US00 9626
21254 7590 11/30/2017
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
SINCLAIR, DAVID M
ART UNIT PAPER NUMBER
2848
MAIL DATE DELIVERY MODE
11/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMONORI KAKO, SUMIO MORI, and AKIHIKO
MIYAZAKI1
____________

Appeal 2017-002672
Application 14/307,421
Technology Center 2800
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim an electric storage device comprising a positive
electrode 11 including a positive active material layer 11B having a side
surface thereof covered with a protective layer 11C, a negative electrode 13,
and a separator 12 having a binder-containing inorganic layer 12B opposed
to the positive active material layer, wherein the protective layer is

1 GS Yuasa International, Ltd. is identified as the real party in interest. App.
Br. 1.
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Application 14/307,421
2
configured to protect the positive active material layer from binder eluted
from the inorganic layer (independent claim 1, dependent claim 19, Fig. 5).
Appellants also claim an electric storage device embodiment wherein a
material of the protective layer is different from a material of the inorganic
layer (dependent claim 16; see also independent claim 18).
A copy of representative claims 1 and 16, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. An electric storage device, comprising:
a positive electrode;
a negative electrode; and
a separator placed between the positive electrode and the
negative electrode,
wherein the positive electrode includes a positive
electrode substrate, a positive active material layer formed on the
positive electrode substrate, and a protective layer that
covers at least one of side surfaces in a width direction of the
positive active material layer, wherein the negative electrode
includes a negative electrode substrate and a negative active
material layer formed on the negative electrode substrate,
wherein the separator includes a separator substrate
opposed to the negative active material layer, and an inorganic
layer containing a binder, the inorganic layer being formed
on the separator substrate and being opposed to the positive
active material layer, and
wherein the protective layer is configured to protect the
positive active material layer from the binder eluted from the
inorganic layer.

16. The electric storage device according to claim 1, wherein
a material of the protective layer is different from a material of
the inorganic layer.

Appeal 2017-002672
Application 14/307,421
3
The Written Description Rejection
The Examiner rejects claims 16 and 18–20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Final Action 3).
According to the Examiner, the Specification disclosure contains no
written description support for the feature recited in dependent claim 16 and
independent claim 18 (from which claims 19 and 20 depend) wherein a
material of the protective layer is different from a material of the inorganic
layer (id.).
Appellants point out that their Specification discloses preparing an
inorganic layer using inorganic particles such as alumina particles, a binder,
and a thickener (App. Br. 7 (citing Spec. 22)) and discloses a constituent
material of the protective layer is preferably Al2O3 particles (id. (citing Spec.
18)). Appellants then state without embellishment,
[t]herefore, contrary to the Examiner’s allegation, the
specification, as initially filed, does indeed demonstrate
complete possession of the claimed invention, sufficient enough
and described in a way to allow one of ordinary skill in the art at
the time of the invention to know that Appellant had possession
of the claimed invention.
(Id.).
“[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
Appellants’ unembellished statement is conclusory and fails to reveal
why the cited Specification disclosures would reasonably convey to those
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Application 14/307,421
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skilled in the art that Appellants had possession of the claimed subject
matter wherein a material of the protective layer is different from a material
of the inorganic layer.
For this reason and for the reasons given in the Final Office Action
and the Answer, we sustain the Examiner’s § 112, first paragraph, rejection
of claims 16 and 18–20.

The Anticipation Rejection
The Examiner rejects claims 1–9, 11, and 14 under 35 U.S.C.
§ 102(a)(1) as anticipated by Yamaki (US 2007/0122694 A1; publ. May 31,
2007) (Final Action 4–8).
Regarding independent claim 1, the Examiner finds that a lower
portion of Yamaki’s binder-containing film 14 corresponds to the claimed
protective layer by covering a side surface of the positive active material
layer 11, and an upper portion of film 14 corresponds to the claimed
inorganic layer, whereby the lower portion would protect the positive active
material layer from the binder eluted from the inorganic layer (i.e., the upper
portion of film 14) as claimed (id. at 4–5).
Appellants argue that “the alleged side surface of portion 14 is a part
of the alleged top portion 14 and includes the alleged binder of Yamaki (see
Yamaki at Figs. 1 and 2), and therefore would not protect the alleged
positive active material 11 from the binder eluted from the inorganic layer”
(App. Br. 8–9).2

2 Appellants do not present separate arguments specifically directed to
dependent claims 2–9, 11, and 14 (see App. Br. 8–9). Accordingly, these
dependent claims will stand or fall with their parent independent claim 1.
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The Examiner responds by pointing out that the binder and other
materials disclosed in the Specification for the inorganic layer and protective
layer are overlapping and correspond to the materials of Yamaki’s inorganic
layer (i.e., the upper portion of film 14) and protective layer (i.e., the lower
portion of zone 14) whereby the latter necessarily will perform the
protecting function recited in claim 1 (Ans. 5–6). Significantly, the Reply
Brief does not address, and, therefore, does not show error in, the
Examiner’s response. As a consequence, Appellants fail to provide the
record with any explanation why the claimed protecting function is
performed by their binder-containing protective layer, but not Yamaki’s
corresponding binder-containing protective layer (i.e., the lower portion of
film 14).
For these reasons, we sustain the § 102(a)(1) rejection of claims 1–9,
11, and 14 as anticipated by Yamaki.

The Obviousness Rejection
The Examiner rejects claims 1, 2, 5, 6, and 9–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Matsuda (WO 2012/128160 A1; publ.
Sept. 27, 2012 (with reference to English equivalent US 2014/0011064 A1;
publ. Jan. 9, 2014)) in view of Fukumoto (WO 2011/108119 A1; publ. Sept.
9, 2011) (Final Action 9–16).
The Examiner finds that Masuda’s separator 5 does not include a
binder-containing inorganic layer (as recited in independent claims 1 and
18), and concomitantly that Masuda’s protective layer 3 is not disclosed as
protecting the positive active material layer 2 from binder eluted from the
inorganic layer (as recited in independent claim 1 and dependent claim 19)
(id. at 9–10). In addition, the Examiner finds that Fukumoto discloses a
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separator including a binder-containing inorganic layer 54 (id. at 10), and
concludes that it would have been obvious to provide Masuda’s separator
with an inorganic layer as taught by Fukumoto, thus obtaining a
configuration wherein Masuda’s protective layer protects the positive active
material layer from binder eluted from the inorganic layer as claimed (id. at
10–11).
Concerning the rejected claims generally, Appellants contend that
“these references [to Matsuda and Fukumoto] are unrelated and would not
have been combined as alleged by the Examiner” (App. Br. 11).
Appellants’ contention is not accompanied by any explanation why
Matsuda and Fukumoto would not have been combined as proposed. As a
consequence, the contention is in the nature of a conclusory assertion and
fails to reveal error in the Examiner’s proposed combination.
Appellants also argue that “Matsuda and Fukumoto are silent about,
and fail to teach or suggest that the protective layer is configured to protect
the positive active material layer from the binder eluted from the inorganic
layer, as recited in [independent] claim 1, and similarly recited in
[dependent] claim 19” (id.).
In response, the Examiner explains:
[T]he protective layer of Matsuda inhibits the direct reaction of
the component eluted from the binder of the inorganic layer
(taught by Fukumoto) with the positive active material . . . as the
protective layer is formed to cover a portion of the positive
electrode active material and thus a direct reaction cannot occur
as the eluted component does not directly contact the active
material at said portion. Furthermore, as the materials of the
Matsuda and Fukumoto [references] are the same as those
disclosed/claimed by [A]ppellant[s,] the [E]xaminer contends
that said materials will function in the same way.
(Ans. 6–7).
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Once again, the Reply Brief does not address, and so does not show
error in, the Examiner’s response to Appellants’ above argument. We
emphasize that Appellants do not challenge the Examiner’s determination
that the combination of Matsuda and Fukumoto would result in the same
materials functioning in the same way as those disclosed and claimed.
Based on the record before us, therefore, the protecting function recited in
independent claim 1 and dependent claim 19 inherently would be “the
natural result of the combination of elements explicitly disclosed by the prior
art.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195–96 (Fed.
Cir. 2014).
For the reasons given above and by the Examiner, we also sustain the
§ 103(a) rejection of claims 1, 2, 5, 6, and 9–20 over Matsuda in view of
Fukumoto.

Conclusion
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED