Ex Parte MOMO

Patent Trial and Appeal Board

Jul 31, 2017

13778205 (P.T.A.B. Jul. 31, 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.
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.
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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”).
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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.
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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:
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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.
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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
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