Ex Parte Lam et al

Board of Patent Appeals and Interferences

Jul 30, 2010

10478920 (B.P.A.I. Jul. 30, 2010)

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.
10/478,920 11/19/2003 Phuong-Nghi Lam Q189-US1 4054
31815 7590 07/30/2010
MARY ELIZABETH BUSH
QUALLION LLC
P.O. BOX 923127
SYLMAR, CA 91392-3127
EXAMINER
LEE, CYNTHIA K
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
07/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHUONG-NGHI LAM, HIROYUKI YUMOTO,
DAVID M. SKINLO, TAISON TAN, and DAVID L. DEMUTH
____________

Appeal 2009-010434
Application 10/478,920
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 82-126. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010434
Application 10/478,920

Appellants claim a battery comprising a positive foil substrate with a
coating of active material particles on both faces of the foil substrate (claim
82). Appellants also claim a method of making such a battery (claim 119).
Representative claims 82 and 119, the sole independent claims on
appeal, read as follows:
82. A battery, comprising:

a negative electrode; and

a positive electrode including

a positive foil substrate, and

a coating on both faces of the foil substrate,

the coating includes particles having an active material
chosen from the group consisting of: Bi203, Bi2Pb205,
fluorinated carbon (CFx), CuCl2, CuF2, CuO, Cu4O(PO4)2, CuS,
FeS, FeS2, MnO2, MoO3, Ni3S2, AgC1, Ag2CrO4, V2O5, silver
vanadium oxide (SVO), and MO6S8,

the particles have an average diameter greater than 1 µm
and up to 100 µm.

119. A method for making a battery, comprising:

forming a slurry that includes particles of an active material
selected from a group consisting of: Bi203, Bi2Pb205, fluorinated
carbon (CFx), CuCl2, CuF2, CuO, Cu4O(PO4)2, CuS, FeS, FeS2, MnO2,
MoO3, Ni3S2, AgC1, Ag2CrO4, V2O5, silver vanadium oxide (SVO),
and MO6S8, the particles having an average diameter greater than 1
µm and up to 100 µm; and

coating the slurry onto both faces of a foil substrate.
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Appeal 2009-010434
Application 10/478,920

Under 35 U.S.C. § 103(a), the Examiner rejects claims 82-86, 89-96,
100, 101, and 107-126 as being unpatentable over Gan (US 6,727,022 B2,
issued Apr. 27, 2004) in view of Paulot (US 2003/0113628 A1, pub. Jun. 19,
2003) and Iwasaki (US 6,325,611 B1, issued Dec. 04, 2001), and the
Examiner correspondingly rejects the remaining claims on appeal over these
references and further in view of other references of record (Ans., mailed 20
May 2008, 3-8).
The Examiner acknowledges that the battery and method of claims 82
and 119 respectively use a positive screen, rather than Appellants’ claimed
foil, as a current collector/substrate but finds that Iwasaki teaches using as a
positive collector materials in the form of foils or expanded metals or nets of
metals with aluminum foil being preferable as a positive collector (id. at 3-
4). The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to replace Gan’s positive collector screen with a
positive collector foil in view of Iwasaki (id. at 4).
The Examiner offers two rationales in support of this obviousness
conclusion. As one rationale, the Examiner states that an artisan would have
replaced Gan’s current collector screen with a current collector foil as taught
by Iwasaki “because a current collector screen and a current collector foil
are considered functionally equivalent current collectors” (id.). As an
alternative rationale, the Examiner states that a current collector screen is not
functionally equivalent to a current collector foil but nevertheless an artisan
would have replaced Gan’s screen with Iwasaki’s foil because “the foil
current collector would avoid the contamination [taught by Gan to be]
associated with the openings of the screen current collector” (id. at 8). As
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Appeal 2009-010434
Application 10/478,920

additional support for an obviousness conclusion, the Examiner further
states that
Gan’s screen current collector and Iwasaki’s foil current
collector are both used to support active materials for
batteries [and] substituting one for the other would have been
within the level of an ordinary skill in the art to achieve [the]
predictable results of collecting current from the electrode of
the battery

(id.).
Appellants’ arguments concerning the Examiner’s rejections are
focused on independent claims 82 and 119 (Appeal Brief, filed 17 Jan. 2008,
(App. Br.) 7-13). The dependent claims including the separately rejected
dependent claims have not been separately argued by Appellants (id. at 13-
14). Accordingly, the dependent claims will stand or fall with independent
claims 82 and 119.2
Concerning the independent claims, Appellants argue that an artisan
would not have found it obvious, and would not have been motivated, to
substitute Iwasaki’s foil current collector for Gan’s screen current collector
(id. at 9-10, 12).
This argument is unpersuasive.

2 The Claims Appendix of Appellants’ Appeal Brief reflects that dependent
claims 118 and 120-126 depend from claims which Appellants state are
cancelled (“[c]laims 1-81 are cancelled”; App. Br. 3). In light of our
disposition of this appeal, we will consider these dependent claims as
grouped with Appellants’ independent claims. However, upon return of this
application to the jurisdiction of the Examining Corps, the Examiner and
Appellants should appropriately address and correct the improper
dependency of these claims.
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Appeal 2009-010434
Application 10/478,920

Either of the Examiner’s above-discussed rationales for combining the
teachings of Gan and Iwasaki establishes a prima facie case of obviousness.
This prima facie case is particularly well supported by the Examiner’s
above-quoted point that screen and foil current collectors are known in the
prior art and substituting one for the other would have been within the level
of ordinary skill in the art in order to achieve the predictable results of
collecting current (Ans., mailed 20 May 2008, 8). The relevance of this
point to the Examiner’s obviousness conclusion is highlighted by the
established legal principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results” (KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
415-16 (2007)). Moreover, the Examiner’s conclusion that it would have
been obvious to replace Gan’s screen current collector with Iwasaki’s foil
current collector is reinforced by the fact that, contrary to Appellants’ belief,
Gan’s current collector is not necessarily a screen (col. 9, Ex. 2).
Appellants also argue that paragraph 73 of their Specification
establishes that the use of a foil, rather than a screen, yields unexpected
results (App. Br. 7-8).
This argument is without convincing merit.
Paragraph 73 of Appellants’ Specification discloses that a foil
possesses certain advantages relative to a screen current collector. This
paragraph contains no evidence that the stated advantages are unexpected
and does not even characterize the advantages as being unexpected.
Therefore, the appeal record contains no probative, objective support for
Appellants’ argument that their claimed foil exhibits unexpected results.
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Appeal 2009-010434
Application 10/478,920

To the contrary, the record supports the common sense determination
that different current collectors or substrates would be expected to possess
different properties and advantages relative to one another. This
determination is supported by the applied prior art, particularly Iwasaki
which, according to the Examiner’s above-noted finding, evinces that screen
and foil collectors are known and expressly teaches that “an aluminum foil is
preferable as a positive electrode collector” (col. 18, ll. 17-18).
Significantly, Appellants do not dispute this finding by the Examiner.
Appellants further argue that the independent claims require the
same coating or slurry on both faces of the foil substrate whereas Gan
teaches a different coating on each face (App. Br. 10 and 12).
Appellants’ argument is not well taken.
As correctly indicated by the Examiner, Appellants’ claims do not
expressly or even impliedly require that the same coating is on each of the
foil substrate faces (Ans., mailed 20 May 2008, 10; Ans., mailed 17 Sept.
2008, 12). It is appropriate to emphasize that the Examiner’s claim
interpretation has not been refuted by Appellants with any reasonable
specificity in the record before us. Appellants’ argument also lacks
persuasive merit because it is based on the incorrect belief that Gan’s
collector faces are always coated with different materials. To the contrary,
Gan expressly teaches an embodiment wherein each collector face is coated
with the same material, namely, SVO (col. 9, Ex. 2).
Finally, Appellants argue that the pressing step taught by Gan does
not teach or suggest the coating step of claim 119 (App. Br. 13).
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Appeal 2009-010434
Application 10/478,920

We agree with the Examiner, however, that Appellants have failed to
establish in this record any patentable distinction between these steps (Ans.,
mailed 17 Sept. 2008, 12).
For the above-stated reasons, we sustain the Examiner’s § 103
rejections of all appealed claims.
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) (2008).

AFFIRMED

ssl

MARY ELIZABETH BUSH
QUALLION LLC
P.O. BOX 923127
SYLMAR, CA 91392-3127
7