Ex Parte MOMODownload PDFPatent Trial and Appeal BoardJul 31, 201713778205 (P.T.A.B. Jul. 31, 2017) 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. 13/778,205 02/27/2013 Junpei MOMO 740756-3881 1509 22204 7590 08/02/2017 NIXON PEABODY, LLP 799 Ninth Street, NW SUITE 500 WASHINGTON, DC 20001 EXAMINER DOUYETTE, KENNETH J ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 08/02/2017 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): nppatent @ nixonpeabody. com ipairlink @ nixonpeabody. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUNPEI MOMO Appeal 2017-000444 Application 13/778,205 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHRISTOPHER L. CRUMBLEY, and MICHAEL G. McMANUS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The claims on appeal are directed to a power storage device comprising a positive electrode, a first separator, a negative electrode, and a second separator positioned over a supporting board. One end portion of the positive electrode is fixed to a positive electrode tab and one end portion of the negative electrode is fixed to a negative electrode tab. The supporting board comprises a first region Appeal 2017-000444 Application 13/778,205 connected to the positive electrode tab, a second region connected to the negative electrode tab, and a curved region between the first and second regions. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated June 13, 2016 (“App. Br.”). The limitations at issue are italicized. 1. A power storage device comprising: a supporting board of an insulator; and power storage elements over the supporting board, each including: a positive electrode; a first separator over the positive electrode; a negative electrode over the first separator; and a second separator over the negative electrode, wherein a plurality of the power storage elements are stacked, wherein the positive electrode, the negative electrode, the first separator, and the second separator have sheet-like shapes and flexibility, wherein one end portion of each of the positive electrodes is fixed to a positive electrode tab, wherein one end portion of each of the negative electrodes is fixed to a negative electrode tab, wherein the plurality of the power storage elements are placed between the positive electrode tab and the negative electrode tab, wherein the supporting board comprises a first region connected to the positive electrode tab and a second region connected to the negative electrode tab, and wherein the supporting board comprises a curved region between the first region and the second region. App. Br. 17. 2 Appeal 2017-000444 Application 13/778,205 Similarly, independent claims 8 and 16 are directed to a power storage device comprising, inter alia, a supporting board comprising a first region connected to a positive electrode tab, a second region connected to a negative electrode tab, and a curved region between the first and second regions. App. Br. 19, 20. The claims on appeal stand rejected as follows: (1) claims 1, 5, and 7 under 35 U.S.C. § 103(a) as unpatentable over Yang et al.1 in view of Notten et al.2 and Ahn;3 (2) claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Yang in view of Notten and Ahn, and further in view of Amine et al.;4 (3) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Yang in view of Notten and Ahn, and further in view of Yamazaki et al.;5 (4) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Yang in view of Notten and Ahn, and further in view of Zolotnik et al.6 (5) claims 8, 13, and 15 under 35 U.S.C. § 103(a) as unpatentable over Wang et al.7 in view of Notten and Ahn; (6) claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Wang in view of Notten and Ahn, and further in view of Amine; (7) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Wang in view of Notten and Ahn, and further in view of Yamazaki; 1 US 6,461,762 Bl, issued October 8, 2002 (“Yang”). 2 US 2003/0039883 Al, published February 27, 2003 (“Notten”). 3 US 2011/0104520 Al, published May 5, 2011 (“Ahn”). 4 US 2011/0121240 Al, published May 26, 2011 (“Amine”). 5 US 2010/0227228 Al, published September 9, 2010 (“Yamazaki”). 6 US 2004/0161669 Al, published August 19, 2004 (“Zolotnik”). 7 US 2005/0048361 Al, published March 3, 2005 (“Wang”). 3 Appeal 2017-000444 Application 13/778,205 (8) claim 12 under 35 U.S.C. § 103(a) as unpatentable over Wang et al. in view of Notten and Aim, and further in view of Yang; (9) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Wang in view of Notten and Aim, and further in view of Zolotnik; (10) claims 1, 6, and 16 under 35 U.S.C. § 103(a) as unpatentable over Zolotnik in view of Notten and Ahn; (11) claims 2, 3, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Zolotnik in view of Notten and Ahn, and further in view of Amine; and (12) claims 5, 7, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Zolotnik in view of Notten and Ahn, and further in view of Yang. B. DISCUSSION The Examiner finds Yang discloses a power storage device comprising, inter alia, power storage elements, each including positive electrode 18, first separator 17, negative electrode 19, and second separator 19’ wherein one end portion of the positive electrode is fixed to positive electrode tab 15 and one end portion of the negative electrode is fixed to negative electrode tab 16. Final 2—3.8 The Examiner finds Yang does not disclose that the power storage elements are disposed over a supporting board that comprises (1) first and second regions connected to the positive electrode tab and the negative electrode tab, respectively, and (2) a curved region between the first and second regions as recited in claim l.9 Final 3, 4. 8 Final Office Action dated January 22, 2016. 9 The Examiner makes similar findings regarding the power storage elements disclosed in primary references Wang and Zolotnik. Final 8—10, 15—17. Thus, in this Decision on Appeal, we limit our discussion of the primary references to Yang. 4 Appeal 2017-000444 Application 13/778,205 The Examiner finds Notten discloses a battery comprising, inter alia, curved supporting structure 12 that is in contact with the ends of the electrodes at tab regions. Final 3 (referring to Notten Figs. 3—5). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to incorporate Notten’s supporting structure 12 into Yang’s device to enhance the structural integrity of the battery. Final 4. The Examiner finds Ahn discloses a battery comprising, inter alia, electrodes having tabs 135. The Examiner finds tabs 135 are connected to battery case 120 via support member 161. The Examiner finds the configuration “enhances the structural integrity of the battery at the lead tab area.” Final 4 (citing Ahn || 21, 58). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to incorporate Ahn’s support member 161 into Yang’s device at the lead tab area for the reasons disclosed in Ahn. Final 4. The Appellant argues that the Examiner relies on Notten’s support structure 12 and Ahn’s support member 161 to render obvious two different features of the claimed supporting board. App. Br. 13. Indeed, in the rejection on appeal, the Examiner modifies Notten’s supporting structure with Ahn’s supporting structure to form a supporting structure that not only is curved (i.e., as in Notten) but also comprises first and second regions connected to positive and negative electrode tabs, respectively (i.e., as in Ahn). The Examiner then incorporates that modified supporting structure into Yang’s device. See Ans. 34 (“[modifying the supporting structure 12 of Notten to include the supporting member 161 of Ahn[,] resulting] in a structure within a battery casing/container that has regions attached to each electrode tab/terminal structure,” and then “[ijnserting this structure into the structure of the respective primary reference [e.g., Yang]”). The Appellant argues that: 5 Appeal 2017-000444 Application 13/778,205 [T]he Examiner does not proffer some teaching, suggestion, or motivation to combine the teachings ofNotten andAhn either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. In fact, the supporting structure (ref 12) of Notten and the insulating support member (refs 161) of Ahn are very different in size, shape and function. App. Br. 13 (emphasis added). The Appellant argues that Ahn’s support member 161 is formed of an insulating tape whereas Notten’s support structure 12 is as thin as possible and is made of materials that are inert in the battery electrolyte, such as polyethylene and polypropylene. App. Br. 14. In response, the Examiner explains that “[t]he supporting structure 12 of Notten and supporting member [161] of Ahn are clearly combinable from a pure visual standpoint in a comparison of the respective drawings [i.e., Notten Figures 3 and 4 and Ahn Figure 5].” Ans. 34.10 To the extent that Notten’s supporting structure and Ahn’s supporting structure are combinable, the Examiner has not articulated a reason why one of ordinary skill in the art would have combined the structures ofNotten and Ahn, as proposed by the Examiner, to form the claimed supporting board. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements, instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”); see also Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). For that reason, rejection (1) is not 10 Examiner’s Answer dated August 3, 2016. 6 Appeal 2017-000444 Application 13/778,205 sustained. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a prima facie case of unpatentability). The Examiner does not rely on Amine, Yamazaki, or Zolotnik to cure the deficiencies identified above in the rejection of claim 1. Therefore, rejections (2)— (4) are not sustained. As for the remaining rejections on appeal, the Examiner relies on the same combination of Notten and Ahn in rejections (5) and (10) to modify the power storage devices of Wang and Zolotnik, respectively. As discussed above, the Examiner has not articulated a reason why one of ordinary skill in the art would have combined the structures of Notten and Ahn, as proposed, to form the claimed supporting board, and the Examiner’s reliance on the remaining prior art of record does not cure the deficiencies in rejections (5) and (10). Therefore, remaining rejections (5)—(12) are not sustained. C. DECISION The Examiner’s decision is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation