Ex Parte Pascaly et al

Patent Trial and Appeal Board

Feb 21, 2017

13387750 (P.T.A.B. Feb. 21, 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.
13/387,750 06/13/2012 Matthias Pascaly 392613US99PCT 7477
22850 7590 02/23/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
AMPONSAH, OSEI K
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS PASCALY, ROLF-WALTER TERWONNE, and
CHRISTIAN HYING
Appeal 2015-002288
Application 13/387,750
Technology Center 1700
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
JULIA HEANEY Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1—6 and 13—22 of Application
13/387,750.2 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on February 13, 2017. We reverse.
1 Appellants identify the real party in interest as Evonik Degussa Gmbh. Br.
1.
2 Final Action dated January 30, 2014 (“Final Act.”) at 3, 6, and 8. This
decision also refers to the Specification filed January 30, 2012 (“Spec.”), the
Appeal Brief dated Aug. 29, 2014 (“Br.”), and the Examiner’s Answer dated
Nov. 6, 2014 (“Ans.”).
Appeal 2015-002288
Application 13/387,750
BACKGROUND
The subject matter on appeal relates to a membrane having a sheetlike
flexible substrate with a porous inorganic coating on and in the substrate, the
substrate comprising polyaramid fibers that are pure or joined to fibers of at
least one further polymer. Spec. 1. Appellants’ Specification describes that
the membrane may be used as a separator in the electrolyte of a battery and
has the advantages of high temperature stability, improved tensile strength,
and puncture resistance. Id. at 4. Claim 1, the sole independent claim, is
illustrative of the claimed subject matter:
1. A membrane, comprising:
a sheetlike, flexible, woven or nonwoven substrate comprising
electrically nonconductive fibers, which is provided with a
multiplicity of openings; and
a porous inorganic coating on and inside the substrate, wherein
the electrically nonconductive fibers comprise
(i) pure polyaramid fibers melted together,
(ii) polyaramid fibers melted to fibers of a further polymer
having a melting point lower than the decomposition point of the
polyaramid fibers, or
(iii) polyaramid fibers melted to one another with a polymeric
binder.
Br. 17 (Claims Appx).
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Appeal 2015-002288
Application 13/387,750
THE REJECTIONS
1. Claims 1—3, 6, 17, and 20—22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Yamazaki3 and
Hasegawa.4
2. Claims 4, 5, 13—16, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Yamazaki, Hasegawa, and
Katayama.5
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Yamazaki, Hasegawa, and Kimura.6
DISCUSSION
Yamazaki discloses a separator for an electric double-layer capacitor
that comprises an aramid fiber, a polyester fiber, a glass fiber, and a silica.
Yamazaki, Abstract. The Examiner acknowledges that Yamazaki does not
disclose that the aramid fiber and polyester fiber are melted to each other, as
recited in claim 1. Final Act. 4. The Examiner determines, however, that in
view of Hasegawa’s teaching of a storage battery separator comprising
polymeric fibers and glass fibers that are bonded together by melting, in
order to improve tensile strength of the separator, it would have been
3 Yamazaki et al., US 6,937,459, issued August 30, 2005 (“Yamazaki”).
4 Hasegawa et al., US 4,367,271, issued January 4, 1993 (“Hasegawa”).
5 Katayama et al., US 2007/0264577, published November 15, 2007
(“Katayama”).
6 Kimura, JP 2005-183594, published July 7, 2005; as translated (“Kimura”).
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Appeal 2015-002288
Application 13/387,750
obvious to a person of ordinary skill in the art to melt Yamazaki’s fibers in
order to bond them. Id., citing Hasegawa 4:10-17.
Appellants argue that the rejections should be reversed because the
evidence of record does not support the conclusion of obviousness. Br. 5—6.
Specifically, Appellants argue that a person of ordinary skill in the art would
not have been led to use a melting process as described in Hasegawa to a
mixture of synthetic organic fibers as described in Yamazaki. Id.
Appellants’ argument is persuasive of reversible error. The Examiner
has the initial duty of supplying the requisite factual basis for obviousness.
See In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 201 l)(the Examiner has
the initial burden to show unpatentability). As Appellants persuasively
explain, a person of ordinary skill in the art would not have been led to apply
Hasegawa’s process of melting together a mixture of glass fibers and
synthetic fibers, which have dissimilar surfaces, to Yamazaki’s mixture of
similar synthetic fibers. Br. 9—10, citing Hasegawa 1:8—29. Further, the
Examiner’s response that Yamazaki’s mixture can include glass fibers, in
addition to aramid (organic) fibers and polyester (synthetic) fibers (Ans. 11),
does not support the rejection; although claim 1 does not exclude glass
fibers, it requires that melting occur between the polyaramid fibers, or the
polyaramid fibers and a further polymer. Br. 17 (Claims Appx).
Accordingly, we conclude that the Examiner reversibly erred and has
not established obviousness with respect to claim 1 or any of the dependent
claims subject to Rejection 1. Because Rejections 2 and 3 also rely on the
combination of Yamazaki and Hasegawa, we cannot uphold those rejections.
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Appeal 2015-002288
Application 13/387,750
SUMMARY
We reverse the rejection of claims 1—6 and 13—22.
REVERSED
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