Ex Parte Severich et al

Board of Patent Appeals and Interferences

Sep 10, 2009

10831062 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIGIT SEVERICH, GERHARD SCHOEPPING,
WOLDGANG HALLSTEIN, STEPHAN RUTZ
and PETER KRITZER
____________________

Appeal 2009-011933
Application 10/831,062
U.S. Patent Publication 2004/0224100
Technology Center 1700
____________________

Decided: September 11, 2009
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and SALLY GARDNER LANE and SALLY C. MEDLEY, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the case 1
Carl Freudenberg KG of Weinheim, Germany ("CF"), the real party 2
in interest, seeks review under 35 U.S.C. § 134(a) of a final rejection (mailed 3
02 May 2008). 4
The application was filed on 23 April 2004. 5
CF claims priority based on a German application filed on 25 April 6
2003. 7
Claims 1-7 and 12-14 are involved in the appeal. 8

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The Examiner relies on the following prior art: 1
Wenneis UK Patent Application
2 098 636 A
Published
24 Nov. 1982
2
The reader should know that "et al" is not used in this opinion. 3
Wenneis is prior art under 35 U.S.C. § 102(b). 4
We have jurisdiction under 35 U.S.C. § 134(a). 5
B. Findings of fact 6
The following findings of fact are supported by a preponderance of 7
the evidence. 8
References to the specification are to U.S. Patent Publication 9
2004/0224100. 10
Emphasis appearing in quoted material has been added. 11
To the extent that a finding of fact is a conclusion of law, it may be 12
treated as such. 13
Additional findings as necessary may appear in the Discussion portion 14
of the opinion. 15
Claims on appeal 16
Claims 1-7 and 12-14 are on appeal. 17
CF presents separate argument for claims 1, 2 and 6. 18
However, as will become apparent, the appeal turns on an issue which 19
resolves the appeal as to all claims on appeal. 20
(1) Claim 1 21
Claim 1, which we reproduce from the Claim Appendix of the Appeal 22
Brief, reads [bracketed matter and some indentation added]: 23

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A plasma-treated planar textile structure comprising 1
[1] synthetic fibers, 2
[2] wherein the structure has a high initial wettability 3
expressed by a height of rise of at least 80 mm after immersion 4
for 30 minutes in an aqueous potassium hydroxide solution, 5
[3] wherein upon storage for three months in air at 6
25 ºC, the structure has a high initial wettability, expressed by a 7
height of rise of at least 75 mm after immersion for 30 minutes 8
in an aqueous potassium hydroxide solution. 9
The claim does not specify the concentration of potassium hydroxide 10
in the aqueous potassium hydroxide solution. The specification mentions a 11
30% potassium hydroxide solution. See, e.g., Specification, ¶ 0089. 12
(2) Claim 2 13
Claim 2 reads [bracketed matter and some indentation added]: 14
The plasma-treated textile structure as recited in claim 1, 15
[4] wherein upon storage for six months in air at 25 ºC, 16
the structure has a high initial wettability, expressed by a height 17
of rise of at least 75 mm after immersion for 30 minutes in an 18
aqueous potassium hydroxide solution. 19
(3) Claim 4 20
Claim 4 reads: 21
The plasma-treated planar textile structure as recited in 22
claim 1, wherein the synthetic fibers include polyolefin fibers. 23
(4) Claim 6 24
Claim 6 reads [bracketed matter and some indentation added]: 25

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The plasma-treated planar textile structure as recited in 1
claim 4, 2
[5] wherein the structure exhibits a height of rise of at 3
least 90 mm after immersion for 30 minutes in a potassium 4
hydroxide solution, and 5
[6] exhibits a height of rise of at least 15 mm after 6
storage for one week in the potassium hydroxide solution at 7
25 ºC. 8
CF's invention 9
The CF invention relates to plasma-treated planar textile structures 10
(nonwoven fabrics) that are said to be permanently hydrophilized. 11
Specification, ¶ 0002. What CF means by "permanently" is not entirely 12
clear. 13
The structures are said to be useful as separators for 14
for rechargeable alkaline batteries. Specification, ¶ 0002. 15
(1) Background 16
Electrochemical alkaline batteries or cells must be provided with 17
separators that separate the two differently charged electrodes in the energy 18
storage device, thus preventing an internal short-circuit. Specification, 19
¶ 0003. 20
Planar textile structures (nonwoven fabrics of synthetic fibers) are 21
said to be well-suited as separator materials because of their good resistance 22
to electrolyte liquids and high flexibility. Specification, ¶ 0014. 23

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However, according to CF, depending on the polymer used for the 1
manufacture of the separator, the corresponding separator materials have 2
different advantages and disadvantages. Specification, ¶ 0015. 3
For example, separators made of polyolefins are said to have a very 4
good resistance to chemical attack by strongly alkaline electrolytes and to 5
oxidation in the chemical environment of the cells. However, the wettability 6
by the alkaline electrolyte is said to be poor. According to CF, in contrast, 7
polyamide can always be wetted sufficiently well, but its resistance to 8
hydrolysis by alkaline electrolytes is not sufficient, especially at elevated 9
temperatures. Specification, ¶ 0016. 10
Plasma-based methods for hydrophilizing planar textile structures 11
have been proposed. Specification, ¶ 0025. 12
According to CF, and prior to the CF invention, permanent 13
hydrophilization without using chemicals is known only in low-pressure 14
plasma. One low-pressure plasma process is said to be described in German 15
patent application 3,116,738. Specification, ¶ 0026. 16
As will become apparent, Wenneis—the UK patent application relied 17
upon by the Examiner—corresponds to German patent application 18
3,116,738. 19
According to CF, nothing is known about the long-term hydrophilic 20
stability of the treated materials. Specification, ¶ 0026. Despite what is said 21
not to be known and as will become apparent, CF nevertheless asserts that 22
the prior art materials have properties which differ from CF's claimed 23
properties. 24

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Further, according to CF, in the textile industry, plasma-based 1
methods working at atmospheric pressure (such as corona discharge) are 2
increasingly gaining importance because—unlike classical low-pressure 3
plasma—complex vacuum technology can be dispensed with. Use of 4
atmospheric pressure is said to reduce both plant and process costs. 5
Specification, ¶ 0027. We do not know what to make of the "increasingly 6
gaining importance" statement. Does it mean that, as of CF's filing date, 7
industry was using atmospheric pressure corona discharge devices? Does it 8
mean that industry would be interested in using atmospheric pressure corona 9
discharge devices? 10
CF goes on to say that various Japanese, European and German patent 11
applications describe methods for treating planar textile structures or porous 12
materials by electric discharge at atmospheric pressure. However, according 13
to CF, in all cases a chemical working gas (e.g., SO2, NO2) has to be 14
supplied to the discharge. Specification, ¶ 0028. We are not told what the 15
properties are for the various planer textile structures described in the 16
Japanese, European and German patent applications. 17
German patent application DE-A-4,235,766 is said to describe the 18
treatment of materials by corona discharge. Specification, ¶ 0031. 19
(2) The CF invention 20
CF says that it has been found that planar textile structures can be 21
given a desired combination of properties by treatment with a plasma 22
produced by a special corona generator, resulting in products that are 23
particularly suitable for use as separators. Specification, ¶ 0034. The 24

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special corona generator may be one said to be described in German patent 1
application DE-A-4,235,766 previously mentioned. 2
An object of the CF invention is to provide products characterized by 3
a high initial wettability and by permanent hydrophilicity. Specification, 4
¶ 0036. What CF means by "permanent" is not altogether clear. 5
The CF invention relates to plasma-treated planar textile structures 6
containing synthetic fibers, which: 7
[1] have a high initial wettability, expressed by a height 8
of rise of at least 80 mm, after immersion for 30 minutes in an 9
aqueous potassium hydroxide solution, and 10
[2] upon storage for three months, preferably six months, 11
in air at 25 ºC., have a high initial wettability, expressed by a 12
height of rise of at least 75 mm after immersion for 30 minutes 13
in an aqueous potassium hydroxide solution. 14
Specification, ¶ 0043. Perhaps storage conditions [2] define what CF means 15
by "permanent." We just do not know. 16
According to CF, products according to the CF invention can be 17
produced by a special plasma treatment. Specification, ¶ 0060. 18
Further according to CF, a corona generator that may be used is that 19
described in German patent application document DE-A-42 35 766, the 20
"entire disclosure of which is incorporated by reference herein." 21
Specification, ¶ 0061. We find it curious that CF has not favored the 22
USPTO with an English-language version of the German patent application 23
given that the corona discharge apparatus of the German patent application 24

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probably is the corona discharge generator used in the special plasma 1
treatment CF claims to use. 2
CF purports to describe the corona discharge generator to be used in 3
the special plasma treatment as follows (Specification, ¶ 0062): 4
Corona generators are generators for generating voltage 5
pulses which are applied to the primary winding of a high-6
voltage transformer and, via the secondary winding thereof, 7
produce a corona discharge between a corona electrode and a 8
counter-electrode. The generator used according to the present 9
invention is characterized in that it automatically adapts to the 10
electrical properties of the materials to be treated, and in that it 11
has a considerably simplified electronic circuit. 12
According to CF (Specification, ¶ 0063): 13
The corona generator used according to the present invention is 14
powered from a DC source, and is essentially composed of a 15
first resonant circuit, a switch, and a second resonant circuit 16
having a high-voltage transformer associated therewith. The 17
first resonant circuit is a series resonant circuit which includes 18
an inductor and a capacitor, and which is connected to the 19
primary winding of the high-voltage transformer via a switch, a 20
diode and an inductor. The inductance of the inductor in the 21
first resonant circuit (charging circuit) and the switching 22
criterion of the switch in the second resonant circuit (discharge 23
circuit), which is derived from the voltage in the capacitor, are 24
selected such that the frequency of the voltage pulses occurring 25

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in the generator at the primary winding is smaller than the 1
natural frequency of the damped secondary resonant circuit. A 2
corona electrode and a grounded counter-electrode are used as 3
the corona discharge path, the planar textile structure to be 4
treated being passed over the counter-electrode. The corona 5
electrode is provided with a dielectric coating, and is arranged 6
at a small distance above the counter-electrode. Therefore, the 7
discharge is of the type of a barrier discharge. 8
CF says that it is preferred that the corona discharge be carried out at 9
atmospheric pressure (Specification, ¶ 0069), but there is no requirement 10
that atmospheric pressure be used. 11
Typical operating pressures in the plasma are said to be 0.7 to 1.3 bar. 12
Specification, ¶ 0071. 13
The general procedure described by CF becomes apparent from Fig. 1, 14
reproduced below. 15

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1
Fig. 1 depicts a flow diagram of a method 2
for making CF’s structure 3
Preferably, discharge is generated via a corona generator of the type 4
described in German patent application DE-A-42 35 766. Specification, 5
¶ 0077. 6
Five examples appear in the specification. If we are to believe CF, the 7
examples are said to show the difference between planar textile structures 8
made according to (1) the CF invention and (2) other processes using a 9
"conventional" corona discharge generator. 10
(3) Example 1 11
A nonwoven polyolefin fabric having a weight per unit area of 50 12

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g/m2 was treated at 1.2 m/min in an atmospheric pressure plasma—1
presumably using a corona discharge generator in accordance with German 2
patent application DE-A-42 35 766. Specification, ¶ 0091. 3
The hydrophilicity of the nonwoven fabric treated was determined 4
immediately after the plasma treatment and after storage for one week in 5
30% aqueous KOH solution. Specification, ¶ 0092. 6
After 30 minutes, the height of rise of the KOH solution was observed 7
to be 85 mm. After storing the nonwoven fabric in the KOH solution for 8
one week, the height of rise was determined to be 35 mm. Specification, 9
¶ 0093 10
After storing the plasma-treated nonwoven fabric in air at 25 ºC for 11
three and six months, respectively, no change in hydrophilicity could be 12
found. Specification, ¶ 0094. 13
After storage and treatment for 30 minutes, the height of rise of the 14
KOH solution was observed to be 85 mm. Specification, ¶ 0094. 15
(4) Example 5—comparison 16
A nonwoven polyolefin fabric having a weight per unit area of 50 17
g/m2 was treated at 1 m/min using a conventional generator. Specification, 18
¶ 0105. The specification is devoid of any description of the conventional 19
generator. 20
After 30 minutes, the height of rise of the KOH solution was observed 21
to be 48 mm. After storing the nonwoven fabric in the KOH solution for 22
one week, the height of rise was determined to be 0 mm. Specification, 23
¶ 0106. 24

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After storing the plasma-treated nonwoven fabric in air at 25 ºC for 1
three months, the height of rise of the KOH solution was observed to be 2
85 mm after 30 minutes. Specification, ¶ 0107. 3
Prior art--Wenneis 4
Wenneis, like CF, involves treatment of nonwoven fabric with a 5
corona discharge generator (page 1:37-43): 6
The invention . . . provides a process for the manufacture 7
of a separator [for a battery] . . . wherein an electrolyte-resistant 8
nonwoven fabric made from synthetic fibers of hydrophobic 9
polymeric material bonded without binder and having 10
labyrinthically arranged pores of radius from 0.2 to 50 µm is 11
passed at a pressure of from 10-2 to 10 mbar through an 12
evacuated chamber and exposed there to a glow discharge 13
which is generated by two electrodes connected to a constant-14
voltage generator or an alternating-current voltage or a high-15
frequency generator, the output power of the generator being 16
varied according to the geometric arrangement of the 17
electrodes. 18
According to Wenneis (page 2:10-14): 19
The nonwoven fabrics which are used . . . according to 20
the invention are rendered hydrophilic by a plasma treatment, 21
based on the action of an electric gas discharge under reduced 22
pressure, and do not contain any foreign components. The 23
electric gas discharge is preferably carried out in air of a gas 24

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whose molecules contain chemical elements having a high 1
electronegativity. 2
Example 1 describes treatment as follows (page 2:42-52): 3
After drying, the sheet-like structure is subjected to an 4
electric gas discharge under reduced pressure. The sample is 5
passed through a vacuum chamber for this purpose. The 6
vacuum chamber contains two electrodes, in between which the 7
nonwoven fabric passes through, and it works at a pressure of 8
10-2 to 10 mbar. The pressure is set at 10-1 mbar and can be 9
varied by means of a control valve, through which just as much 10
as flows as is removed by the pump. The glow discharge is 11
excited by means of a constant voltage generator or an 12
alternating-current voltage or high-frequency generator. The 13
frequency in this example is 30 kHz. The output power of the 14
generator can be varied with geometric arrangement of the 15
electrodes, and the treatment period can be varied between a 16
few seconds and minutes depending on the treatment intensity 17
and the degree of hydrophilization desired. Here, the treatment 18
is carried out for 20 seconds at an output power of the generator 19
of 200 W. Distance between the electrons: 45 mm, area of the 20
electrodes: 100cm2. 21
C. Discussion 22
In the Examiner's Answer, the Examiner took the position that the 23
properties in claim 1 are essentially inherent in the product described by 24
Wenneis. Examiner's Answer, page 3. The Examiner went on to say that 25

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where the Examiner believes a reference product inherently has the same 1
properties as a prior art product, the Examiner may shift the burden of going 2
forward with the evidence to the applicant. We would add that the 3
Examiner's belief has to be reasonable. The Examiner cited In re Fitzgerald, 4
619 F.2d 67 (CCPA 1980). See also In re Best, 562 F.2d 1252, 1254 (CCPA 5
1977) ("[w]here, as here, the claimed and prior art products are identical or 6
substantially identical, or are produced by identical or substantially identical 7
processes, the PTO can require an applicant to prove that the prior art 8
products do not necessarily or inherently possess the characteristics of his 9
claimed product") and In re Spada, 911 F.2d 705, 708-9 (Fed. Cir. 1990) 10
(where claimed composition and prior art composition appear to be the 11
same, USPTO may require applicant to prove there is a difference). 12
We understand CF's position to be that it is not reasonable to assume 13
that the CF products and Wenneis products have the same properties. Why? 14
Because, Wenneis uses corona discharge at low pressure and CF uses corona 15
discharge at atmospheric pressure. But, CF seems to have overlooked the 16
fact that it has already told us that "permanent hydrophilization without 17
using chemicals is known only in low-pressure plasma." Hence, one might 18
say that use of both low pressure and atmospheric pressure can lead to 19
"permanent hydrophilization." 20
At the same time, CF says in its specification that "[n]othing is 21
known about the long-term hydrophilic stability of the treated materials", 22
including those prepared by the process described in German application 23
DE-A-3,116,738—which happens to correspond to UK Wenneis application 24
relied upon by the Examiner. CF tells the USPTO, therefore, that CF does 25

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not know the long-term properties of the Wenneis product. One might 1
conclude that CF's "lack of knowledge" of about long-term hydrophilic 2
stability of treated materials, on the one hand, and its representation that 3
"permanent hydrophilization without using chemicals is known only in low-4
pressure plasma," on the other hand, tell different, possibly inconsistent 5
"stories." 6
While CF and Wenneis use different process conditions, the essential 7
steps (as set out in Fig. 1) are used by both CF and Wenneis. CF claims a 8
product, not a process. 9
While it may be true that Wenneis does not describe what CF refers to 10
and claims as "long-term" properties, it is also true on this record that the 11
USPTO has no means for determining whether the properties are the same or 12
different. In re Brown, 459 F.2d 531, 535 (CCPA 1972); Charles Pfizer & 13
Co., Inc. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). 14
CF maintains that Wenneis establishes that wettability is dependent 15
upon the plasma treatment applied. Appeal Brief, page 6. Assuming CF is 16
correct, it does not follow that CF has established that the wettability of the 17
Wenneis products is not within the scope of the wettability of the claims on 18
appeal. 19
We have not overlooked the experimental data described in the 20
specification. We have no basis for finding that the experiment of 21
Comparative Example 5 is representative of the Wenneis process. All we 22
are told is that a "conventional generator" (whatever that means) was used in 23
Example 5 in place of the "special generator" said to have been used in 24
Example 1. 25

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We find that the Examiner had a reasonable basis for shifting the 1
burden of going forward with the evidence to CF. CF has not presented any 2
credible evidence to show any difference in properties between the CF 3
products and the Wenneis products (or for that matter any of the corona 4
discharge generator-made products described in the other references 5
mentioned in the specification). 6
We have considered CF’s remaining arguments and find none that 7
warrant reversal of the Examiner’s rejections. Cf. Hartman v. Nicholson, 8
483 F.3d 1311, 1315 (Fed. Cir. 2007). 9
D. Decision 10
CF has not sustained its burden on appeal of showing that the 11
Examiner erred in rejecting the claims on appeal as being unpatentable over 12
the prior art. 13
On the record before us, CF is not entitled to a patent containing 14
claims 1-7 and 12-14. 15
Upon consideration of the appeal, and for the reasons given herein, 16
it is 17
ORDERED that the decision of the Examiner rejecting 18
claims 1-7 and 12-14 over the prior art is affirmed. 19
FURTHER ORDERED that no time period for taking any 20
subsequent action in connection with this appeal may be extended under 21
37 C.F.R. § 1.136(a)(1)(iv) (2008). 22

AFFIRMED

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