Ex Parte Oh et al

Board of Patent Appeals and Interferences

Mar 7, 2011

10832343 (B.P.A.I. Mar. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONG-YOUNG OH
and Jeong-Won Oh
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Appeal 2010-002402
Application 10/832,343
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

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 2010-002402
Application 10/832,343

A. Introduction2
Dong-Young Oh and Jeong-Won Oh (“Oh”) timely appeal under
35 U.S.C. § 134(a) from the final rejection3 of claims 1-3 and 11-17.4 We
have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to a jelly roll electrode assembly
said to be useful for rechargeable (“secondary”) batteries.
(Spec. 1 [0002]-[0003].) Oh seeks patent protection for a structure designed
to avoid deformation of the electrodes during winding by providing an
improved geometrical relationship between the external contact electrode
(“tab”) and the uncoated portion of the electrode inside the cell.
Representative Claim 17 reads:
17. A jelly-roll type electrode assembly comprising:
a negative electrode plate comprising:
a negative electrode coated portion coated with a
negative electrode active material layer, and
a negative electrode uncoated portion;
a negative electrode tab electrically connected to the
negative electrode uncoated portion;

2 Application 10/832,343, Jelly-Roll Type Electrode Assembly and
Secondary Battery Employing the Same, filed 27 April 2004, claiming the
benefit of a Korean application filed 26 May 2003. The specification is
referred to as the “343 Specification,” and is cited as “Spec.” The real party
in interest is listed as Samsung SDI Co, Ltd. (Appeal Brief, filed 23 January
2009 (“Br.”), 2.)
3 Office action mailed 2 September 2008 (“Final Rejection”; cited as “FR”).
4 Claims 4-10 and 18-20 have been withdrawn from consideration by the
Examiner and are not before us.
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Application 10/832,343

wherein a width of the negative electrode uncoated
portion is approximately 2 to 3 times that of the
negative electrode tab, and
wherein the negative electrode uncoated portion and the
positive electrode uncoated portion correspond to
winding start portions and are positioned at an innermost
of a winding axis after winding is completed.
(Claims App., Br. 12; paragraphing, indentation, and emphasis added.)
Independent claim 1 is similar, reciting details of the positive
electrode (thereby providing antecedent basis for the “positive electrode
uncoated portion”) and adding the limitation that an insulating separator be
placed between the positive and negative electrode plates.
Independent Claim 11 adds to the limitations recited in claim 1 the
additional limitations that
the width of the positive electrode uncoated portion is
approximately 1.5 to 3 times wider than the negative
electrode uncoated portion, and
the positive electrode tab is disposed farther from the positive
electrode coated portion than the negative electrode tab is
from the negative electrode coated portion
(Claims App., Br. 10; paragraphing, indentation, and emphasis added).
The Examiner has maintained the following grounds of rejection:5
A. Claims 1-3 and 11-17 stand rejected under 35 U.S.C. § 103(a)
in view of Mizutani.6

5 Examiner’s Answer mailed 16 April 2009 (“Ans.”).
6 Toru Mizutani, Non-Aqueous Electrolytic Battery and its Manufacturing
Method, WO 03/017411 A1 (27 February 2003). U.S. Patent 7,132,194 B2
(7 November 2006), accorded a filing date of 31 March 2003, based on the
WO 411 international application, is used without objection as a translation.
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Appeal 2010-002402
Application 10/832,343

B. Claims 1-3 and 11-17 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Oshima7 and Mizutani.
With respect to Rejection A, Oh argues principally that Mizutani
Figure 1 does not suggest that the width of the uncoated portion of the
negative electrode is approximately two to three times the width of the
negative electrode tab, and that the Examiner improperly relied on the figure
to arrive at that conclusion. (Br. para. bridging 7-8.) Oh argues further that
Figure 1 shows the uncoated portion of the positive electrode to be about the
same width as the negative uncoated portion, rather than approximately 1.5
to 3 times wider as required by claim 11. (Br. 8.) Oh does not raise any
other arguments for the separate patentability of any other claims.
Oh argues that Rejection B in view of Oshima and Mizutani is
erroneous because “Oshima clearly shows that the width of the uncoated
portion 11 of the negative electrode is more than 2 to three times that of the
negative eletrode tab 12.” (Br. 10, ll. 6-8.8) Moreover, Oh argues, Oshima
only describes a battery in which the electrode tabs are on the outer portion
of the electrode assembly, rather than in the interior of the winding, as
claimed. (Id. at ll. 13-15.)

7 Tsutomu Oshima, Square Type Nonaqueous Electrolytic Solution
Secondary Battery, JP 2001-210381 (2001). (JPO Computer Translation.)
8 For clarity, throughout this Opinion, element labels are presented in bold
font, regardless of their presentation in the original document.
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Appeal 2010-002402
Application 10/832,343

B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The key points of the claimed invention are illustrated in Figure 5,
which is reproduced below:

{Figure 5 shows an electrode assembly about to be rolled up}
A negative electrode tab 121 is attached to uncoated negative
electrode portion 114, which is about two to three times wider than the tab.
(Spec. 8 [0026].) The remainder of the negative electrode is coated with a
negative electrode active material layer 113 (id. at 7 [0021]), which is shown
as starting on the lower side of the electrode nearer to the tab than on the
upper side. The negative electrode is separated from the positive electrode
by insulating separator 123; insulating separator 124 is provided on the other
side of the negative electrode. (Id. at 9 [0029].) As shown in the figure,
uncoated portion 118 of the positive electrode is longer than uncoated
portion 114 of the negative electrode. (Id. at 10 [0032].) Coated portion 114
of the negative electrode and coated portion 118 of the positive electrode are
described as the “winding start position[s]” of the two electrodes. (Id.
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Appeal 2010-002402
Application 10/832,343

at 9 [0027].) The separators and the electrodes are wound around
noncircular mandrel 30 to form an electrode assembly with tabs 121 and 122
projecting from near the center of the roll. (Spec. 9 [0029]-[0031].)
According to the 343 Specification, in the prior art, the uncoated
portion of the negative electrode is relatively long and generally thinner than
the uncoated portion of the positive electrode, and therefore is susceptible to
crumpling during winding. (Spec. 3 [0010].) Crumpled electrodes are said
to damage the separators (123 and 124). (Id.) The tendency to crumple
during the initial winding phase is said to be reduced by reducing the width
of the uncoated portion 114 of the negative electrode relative to the width of
the tab 121. (Id. at 9 [0031].) Moreover, increasing the width of the positive
electrode uncoated portion, while shifting the positive electrode tab 122
toward the leading edge of the positive electrode uncoated portion, increases
the distance between the positive and negative tabs and reduces the potential
overlap of the tabs. (Id. at 10 [0032].)
Mizutani describes a lithium ion secondary battery having a wound
electrode assembly, an embodiment of which is depicted in Figure 1, which
is reproduced on the following page. Near the center of wound electrode 4,
negative electrode tab 9 is attached to an uncoated portion 16 of the negative
electrode current collector, which is coated further on by negative active
material layer 3. Positive electrode tab 8, which is also near the center of the
assembly, is attached to an uncoated portion 5 of the positive electrode
current collector, which is coated further on by positive active material
layer 2. The two electrode current collectors are separated by seamless
separator 1. (Mizutani col. 5, ll. 35-64.)
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Appeal 2010-002402
Application 10/832,343

Mizutani Figure 1 is shown below:

{Mizutani Figure 1 shows a nonaqueous electrolyte battery}
Initially, we note that Oh’s argument that “drawings in a reference
that are not to scale cannot be used to show dimensions” (Br. 8) is not on
point. References, including drawings, are available for all they would teach
a person having ordinary skill in the art. In the present case, Oh has not
directed our attention to any disclosure in Mizutani that the relative lateral
dimensions of electrode tabs 8 and 9, and the corresponding electrodes 5
and 16 are seriously distorted. In contrast, persons having ordinary skill in
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Application 10/832,343

the art would have understood, given the thicknesses of the electrodes,
which are described as foils (Mizutani col. 6, ll. 42-50; col. 7, ll. 1-9), and
the separating layers, which are described as microporous thin films having
a thickness of 7-25 μm (id. at ll. 21-48), that the thicknesses of those
materials are profoundly enlarged in the figures. We conclude that Oh has
failed to demonstrate harmful error in the Examiner’s reliance on the figures
for evidence of relative proportions that would have been suggested to the
ordinary worker.
Central to this appeal, and not explicitly argued by either the
Examiner or by Oh, is the meaning of the term “the negative electrode
uncoated portion,” as recited in claim 17. The claim language itself is at
first glance unambiguous. Figure 5 of the 343 Specification indicates the
problem: although the negative electrode is coated with an active material
layer on both sides, the coated areas are not the same distance from the tab:
coating 113 begins closer to the tab on the “front” side of the negative
electrode than on the “back” side. Oh has not directed our attention to any
reasonably rigorous definition of the term “coated portion” in
the 343 Specification, and our review of the Specification has not revealed
one that resolves the ambiguity.
Oh’s characterizations of the uncoated portions in Mizutani, while not
providing a definitive resolution of this issue, indicate a consistent way to
proceed. In Mizutani, both the positive and negative electrodes are coated
with an “active material layer” asymmetrically front and back with respect to
the electrode tabs, the asymmetry being depicted as perhaps slightly more
pronounced for the negative electrode in Mizutani Figure 1. Oh argues that,
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Appeal 2010-002402
Application 10/832,343

accepting the figure as representing widths, the uncoated portion 16 of the
negative electrode extends past the positive electrode tab 8 by a distance that
is “at least ten times the width of the negative electrode tab 9.” (Br. 8, 1st
full para., emphasis in original.) Here, Oh appears to consider only the face
of the electrode on the same side as the tab, but not the masking tape 41c, as
“covering” the electrode. But Oh also argues that the width of the positive
uncoated portion shown in Figure 1 “appears to be about the same as the
width of the negative uncoated portion and not 1.5 to 3 times wider than the
negative electrode uncoated portion as recited in independent claim 1.” (Id.)
This last characterization makes sense only if the “uncoated portion” refers
only to the portion of the electrode that is not covered on either side by the
active material layer (2 or 3). Thus, the “negative electrode uncoated
portion” corresponds to the horizontal sections bearing the tabs before the
bends in the electrodes as shown in Figure 1. This definition is not
inconsistent with the language of claim 17, nor is it inconsistent with the
description of the embodiment depicted in Figure 5. We therefore consider
the “negative electrode uncoated portion” to be the portion of the negative
electrode that is not coated on either side by an active material layer.
While we recognize that there are other plausible interpretations that
might be advanced, fully justifying such interpretations would require
findings of fact that go far beyond the scope of examination reflected in the
arguments of the Examiner and Oh. Our disposition of this appeal does not
preclude such further discussions during further prosecution. The critical
point is that the discussion between the Examiner and Oh presents a
sufficient basis for our decision in this case. In our view, the gains from
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Appeal 2010-002402
Application 10/832,343

remanding the case for further development of this issue would not be
commensurate with the additional burdens imposed on the Examiner and on
Oh.
We conclude that Oh has not demonstrated harmful error in the
Examiner’s findings regarding the obviousness of claim 17 (or, equivalently,
based on the arguments raised, of claim 1). The width of the uncoated
portion of the negative electrode, as we have determined the meaning, is
“approximately 2 to 3 times that of the negative electrode tab,” giving due
weight to the term “approximately,” which the 343 Specification does not
define. Oh argues that the Examiner has not given sufficient weight to the
unexpected results—the alleged diminishment of crumpling of the negative
electrode. (Br. para. bridging 8-9.) However, these arguments are not
supported by comparisons in the 343 Specification or by comparisons
submitted in declarations under § 132 during prosecution of the application.
The Patent Office is not required to accept mere allegations as evidence. In
re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“[i]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.”) (internal
quotes and citations omitted).
Claim 11 stands differently due to the requirement that “the width of
the positive electrode uncoated portion is approximately 1.5 to 3 times wider
than the negative electrode uncoated portion” (emphasis added).
Oh’s observation that the width of the uncoated portion of the positive
electrode is about the same as the corresponding width of the “negative
electrode uncoated portion” is supported by Figure 1 of Mizutani, as we (and
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Appeal 2010-002402
Application 10/832,343

apparently Oh) have interpreted that term. Even taking the alternative
interpretation that the uncoated portion refers only to the side of the
electrode on the same side as the tab, the width of the uncoated portion of
the positive electrode would be less than the corresponding width of the
negative electrode. The Examiner’s argument (Ans. 4, ll. 3-8) that the
relative widths are of no patentable weight is at best incomplete because the
Examiner has relied on cases, rather than on evidence in the record. The
Examiner has failed to establish sufficient underlying facts to justify the
legal conclusion that the relative widths of the positive and negative
electrode uncoated portions would have been obviousness in view of those
described by Mizutani. In particular, the Examiner has failed to establish
that the relative widths have no functional consequences.
The rejections based on Oshima fail because, as Oh points out, the
electrode assembly described by Oshima is wound such that the tabs end up
at the outer portion of the assembly, rather than at the inner portion as
required by the claims. The Examiner has not explained why Oshima is
relevant to the width of the electrode tabs.
C. Order
We AFFIRM the rejection of claims 1-3 and 12-17 under
35 U.S.C. § 103(a) in view of Mizutani.
We REVERSE the rejection of claim 11 under 35 U.S.C. § 103(a) in
view of Mizutani.
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Appeal 2010-002402
Application 10/832,343

We REVERSE the rejection of claims 1-3 and 11-17 under
35 U.S.C. § 103(a) in view of the combined teachings of Oshima and
Mizutani.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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