Ex Parte Shida et al

Board of Patent Appeals and Interferences

Feb 26, 2009

10382268 (B.P.A.I. Feb. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASAYUKI SHIDA, SACHIO AKAHIRA,
OSAMU TAHARA, and TAKANOBU YOSHINO
____________

Appeal 2008-6179
Application 10/382,268
Technology Center 1700
____________

Decided:1 February 27, 2009
____________

Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY B.
ROBERTSON, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6179
Application 10/382,268

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 12-16, 18-22, 27, 28, and 32-37. We
have jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a method of
manufacturing an electrode that includes coating a side of a current collector
with a coating mixture during downward movement of the collector through
a coating position. Additionally, Appellants’ claimed invention is directed
to a method of manufacturing an electrode that includes coating a side of a
current collector with a coating mixture wherein the method requires use of
a shut-off valve and valve stem structure disposed in a coating mixture flow
path to interrupt mixture flow and pull back built-up mixture located
between a coating head and the current collector. According to Appellants,
the claimed methods are directed to making electrodes that avoid internal
short-circuiting occurrences due to coating mixture adhering to non-forming
regions of a current collector (Spec. 1-5).
Claims 12, 27, and 34 are all of the rejected independent claims and
these claims are illustrative of the claimed subject matter. Claims 12, 27,
and 34 are reproduced below:
12. A method of manufacturing an electrode comprising a mixed
layer disposed on one side of a current collector via a movable coating head,
the method comprising:

transferring the current collector by a transferring means so as to pass
through a predetermined coating position in a downward direction, and
concurrently coating a mixture on the current collector in the coating
position via a coating head so as to form the mixed layer; wherein the
current collector is moved downward and horizontally away from the
coating head immediately after receiving the coating mixture, and
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Application 10/382,268

moving the coating head with a horizontal component of motion
between the coating position and a withdrawal position disposed at a
distance from the coating position in a direction away from the current
collector, and

providing a switching device disposed in a flow path of said coating
head which drives between an open and a blocking position in order to
further control the deposition of the mixture on the current collector.

27. A method of manufacturing an electrode comprising a mixed
layer disposed on one side of a current collector, wherein

a mixture is supplied in a predetermined direction in a predetermined
coating position so as to coat the mixture on one side of the current collector,
thereby the mixed layer is formed by a coating head,

a built-up mixture between the current collector and the coating head
is pulled back by a mixture interrupting means in a direction opposite to a
direction where the mixture is supplied, when coating of the mixture is
interrupted, wherein a single valve structure pulls back the mixture when
interrupting a flow of the mixture, and

the mixture interrupting means comprises:

a containing hole disposed in a mixture flow path,

a shut-off valve disposed in the containing hole, and

a valve rod being connected to the shut-off valve, and relatively
moving the shut-off valve with respect to the containing hole between an
open position where the shut-off valve is moved away from the containing
hole between an open position where the shut-off valve is moved away from
the containing hole so as to pass the mixture through and an interrupting
position where the shut-off valve blocks the containing hole so as to
interrupt the mixture.

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Application 10/382,268

34. A method of manufacturing an electrode comprising a mixed
layer disposed on one side of a current collector, the method comprising the
step of:

transferring the current collector by a transferring means so as to pass
through a predetermined coating position in a downward direction, and
concurrently coating a mixture on one side of the current collector in the
coating position by a coating head so as to from the mixed layer; wherein the
current collector is moved downward and horizontally away from the
coating means immediately after receiving the coating mixture and

a switching means disposed in a flow path of said coating head drives
between an open and a blocking position in order to further control the
deposition of the mixture on the current collector.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Andersen 6,280,879 B1 Aug. 28, 2001
Takeno 5,882,407 Mar. 16, 1999
Trest 5,456,944 Oct. 10, 1995
Sommer 5,368,893 Nov. 29, 1994
Ichikawa 5,399,196 Mar. 21, 1995
Shinozaki 6,641,671 B2 Nov. 4, 2003

The Examiner maintains the following rejections:
I. Claims 12-16, 18-20, 22, and 32-37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Andersen in combination with either
Trest or Ichikawa, further in combination with Takeno;
II. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Andersen in combination with either Trest or Ichikawa, further in
combination with Takeno and Sommer; and
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Application 10/382,268

III. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Andersen in combination with either Trest or Ichikawa,
further in combination with Takeno and Shinozaki.
We reverse the stated rejections. Our reasoning follows.
ISSUES
Have Appellants identified reversible error in the Examiner’s first and
second stated obviousness rejections by asserting that the Examiner has not
met the burden of establishing a prima facie case of obviousness because the
furnished evidence is inadequate and the supporting rationale is untenable to
reasonably establish that one of ordinary skill in the art would have been led
to arrive at Appellants’ claimed subject matter by a combination of selective
teachings of: (1) Andersen, Trest, Ichikawa, and Takeno (claims 12-16, 18-
20, 22, and 32-37); (2) Andersen, Trest, Ichikawa, Takeno, and Sommer
(claim 21); and/or, (3) Andersen, Trest, Ichikawa, Takeno, and Shinozaki
(claims 27 and 28), as relied upon by the Examiner?
In other words, have Appellants exposed reversible error in the
Examiner’s first and second rejections by asserting that the Examiner’s
proffered explanation for why one of ordinary skill in the art would have
been led to modify Andersen’s continuous coating method based on the
disparate applied references and selected teachings relied upon by the
Examiner is inadequate as to: (1) providing a downward and horizontal away
current collector movement after receiving coating material to Andersen’s
method (claims 12 and 34); (2) providing a switching device or switching
means with open and blocking positions for use in a die flow path in the
method of Andersen (claims 12 and 34); and/or (3) providing a horizontally
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moving coating head with coating and withdrawal positions (claim 12), all
as modifications to Andersen in a manner such that the modifications of
Anderson’s continuous deposition electrode collector laminate production
method would have resulted in a method as called for in any of the rejected
claims?
Moreover, have Appellants exposed reversible error in the third stated
rejection by maintaining that the Examiner’s proffered explanation for why
one of ordinary skill in the art would have been led to modify Andersen’s
continuous coating method based on the applied collection of references
fails to establish the obviousness of applying steps including: (1) pulling
back a built-up mixture between a current collector and coating head using
an interrupting means in a direction opposite to the supply direction when
the coating is interrupted; wherein the interrupting means includes a shut-off
valve located in a containing hole in the mixture flow path; and (2) using a
valve rod connected to the shut-off valve for moving the valve between open
and interrupting positions relative to the containing hole with the open
position being reached by moving the shut-off valve away from the
containing-hole, each as modifications to Andersen’s method and in a
manner such that the modifications of Anderson’s continuous deposition
electrode collector laminate production method would have obviously
resulted in a method as called for in rejected claims 27 and 28?

SUMMARY DISPOSITION
We answer these questions in the affirmative. Consequently, we
reverse the Examiner’s obviousness rejections.
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FINDINGS OF FACT
Andersen states that it was an object of the disclosed invention “to
provide an efficient and economically advantageous method for continuous
high speed production of electrode/current collector laminates having an
electrode layer of uniform thickness despite the presence of current collector
foil irregularities . . . ” (Andersen; col. 2, ll. 20-24).
Andersen discloses or suggests a method of producing
electrode/current collector laminate wherein a layer of an electrode paste is
formed on at least one side of a current collector foil using a patterned
matrice roll, such as a gravure roll, having cells or grooves filled with paste
for transfer of the paste onto the current collector foil (col. 2, ll. 26 -46).
Andersen does not disclose: (1) moving a current collector downward
and horizontally away from a coating head immediately after receiving a
coating mixture (claims 12 and 34); (2) using a switching device or a
switching means arranged in a flow path of a coating head and having open
and blocking positions to further control the mixture deposition on a current
collector; and (3) moving the coating head with a motion that has a
horizontal component between coating and withdrawal positions (claim 12).
(See Andersen in its entirety).
Appellants describe a “switching means” as corresponding to “a
switching shaft 34 installed in a bearing portion 33 driven to open or close
the flow path 32”, which switching means is designed and “disposed in a
flow path 32 of said coating head 30 drives between an open (See Fig. 3)
and a blocking position (See Fig. 2) in order to further control the deposition
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of the mixture M on the current collector C” (App. Br. 6; Specification,
sentence bridging pp. 9-10; Figs. 2-4).
The Examiner acknowledges that Andersen does not “teach a
‘switching means . . . ’” (Ans. 4; claims 12 and 34).
Trest describes a method of coating a web substrate with magnetic
dispersion coatings utilizing a coating die, which die can be outfitted with a
rotating bar (24) located in a cavity (23) to apply shear to the magnetic
dispersion coating material (Abstract; col. 3, ll. 13-24; col. 6, ll. 40-60; col.
10, l. 41col. 11, l. 28; Figs. 10-14).
Ickikawa describes a die coater that includes a die and associated
manifold, pipes, and valves such that the coater apparatus is capable of use
changing paints being supplied without need for disassembly of the die for
cleaning operations when the paint is changed (Abstract; col. 1, ll. 15-42;
col. 3, ll. 7-34; Figs. 1-6).
The Examiner acknowledges that Anderson taken with Trest or
Ichikawa, in combination, fails to disclose s a downward and horizontal
movement of a web (Ans. 4; claims 12 and 34).
Takeno describes, inter alia, a prior art coating die, which die can be
used for coating a downwardly moving web or substrate, such as aluminum,
with an intermittent coating layer using moveable shutter members (col. 1, l.
54 col. 2, l. 23; Fig. 2).
The Examiner refers to the Figure 2 disclosure of Takeno (Ans. 4).
However, the Examiner has found that Anderson, taken with either of Trest
or Ichikawa and in further combination with Takeno, does not teach moving
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a coating head between a coating position and a withdrawal position (Ans. 5;
claim 12).
In the second stated rejection (claim 21), the Examiner additionally
relies on Sommer for an alleged teaching of using a collection means and an
associated suction means for collecting excess coating material during the
coating of a traveling web using a coating roller (Ans. 6; Sommer; col. 2, l.
68 col. 3, l. 12; Fig. 1). Sommer is directed to coating a web, such as a
paper or cardboard web, with high production speeds and uniform coating
using a transfer roller and an air blade with reduced distance between the
applicator and air blade (col. 1, l. 63 col. 2, l. 32).
In the third stated rejection (claims 27 and 28), the Examiner
additionally relies on Shinozaki for showing a coating apparatus that applies
coating material intermittently to a substrate using a deformable chamber
(diaphragm) that employs a servomotor driven ball nut to axially move a ball
screw to draw coating material into a draw-in chamber thereby interrupting
coating material supply through a die discharge opening (Ans. 7; Shinozaki;
Abstract; col. 2, l. 50-col. 3, l. 57; Figs 1-3).
In this regard, the Examiner acknowledges that Andersen in
combination with Trest or Ichikawa, together with Takeno do not teach a
shut-off valve interruption device for the coating material (Ans. 7).
Shinozaki discloses an upward movement of a substrate at the coating
location (col. 2, ll. 56-60).
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PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734
(2007). “[R]ejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
Concerning the first stated obviousness rejection, the Examiner has
not fairly articulated why and how one of ordinary skill in the art would
have effected substantial changes to Andersen’s electrode manufacturing
method, which method employs a patterned matrice roll for applying an
electrode paste coating to a current collector foil, based on the disparate
teachings of the secondary references. For example, the Examiner has not
furnished a persuasive rationale explaining why an ordinarily skilled artisan
would have selected: (1) Trest’s teaching relating to applying shear to a
magnetic dispersion coating using a specified rotating bar; (2) Ichikawa’s
teaching concerning die apparatus and valves employed for switching paints
without the need for die disassembly to clean the die; and (3) Takeno’s
disclosed background prior art teaching respecting intermittent coatings
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being applied to a sheet using moveable shutters; and then employed this
disparate assembly of selected items to modify the continuous high speed
method of producing electrode/current collector laminates disclosed by
Andersen, much less in a manner that would have resulted in a method
corresponding to the method of Appellants’ independent claims 12 or 34.
As pointed out by Appellants,
Once the Examiner finishes his purported "combination
of references" by replacing the gravure roll of Andersen with an
intermittent movable coating head of Trest, moving the coating
head from the replacement position in Andersen to a new
vertically aligned position, and for no cited reason beyond a
reference to Takeno's shutter-die coater (which Takeno
itself teaches away from using) placing the head coater on the
left-hand side of the roll 2, no aspect of the Andersen device
survives. There is no more gravure roll and no more vessel, the
type of coater is changed, the position of the coater is changed,
the orientation of the coater is changed, and the continuous
deposition method is replaced with an intermittent deposition
method. The Examiner's purported "combination" of references
is not merely a combination, but a systematic replacement and
modification of Andersen to create an entirely new device and
method.
The Examiner has essentially taken bits and pieces from
at least three references, sometimes four, and combined them in
such a way as to create a new device not disclosed, taught, or
suggested by any single reference or combination of references.

Reply Br. 5.

Also and with respect to the second stated obviousness rejection of
dependent claim 21, the Examiner has not fairly explained how the
additional teachings of Sommer concerning an excess coating collection
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device cures the aforementioned deficiency in the Examiner’s first stated
obviousness rejection.
Concerning the third stated obviousness rejection of the Examiner,
rejected claims 27 and 28 require a method of manufacturing an electrode
wherein; (1) a coating mixture is supplied intermittently to one side of a
current collector using a coating head and (2) a built-up coating mixture that
is located between the current collector and the coating head is pulled back
in a direction opposite to a supply direction using an interrupting means
comprising a shut-off valve disposed in a containing hole arranged in the
mixture flow path coupled with a valve rod that is connected to the shut-off
valve. The shut-off valve is moved relative to the containing hole between
an interruption position where the valve blocks the containing hole and
interrupts mixture passage and an open position reached by moving the shut-
off valve away form the containing hole to allow passage of the coating
mixture through the containing hole (claim 27: Figs 10 and 11;Spec. 25-28).
As argued by Appellants, the Examiner has not fairly established how
adding Shinozaki to the combination of Andersen, Trest, Ichikawa, and
Takeno would have led one of ordinary skill in the art to an intermittent
electrode manufacturing process employing a shut-off valve and connected
valve rod arranged for movement relative to a containing hole for
interrupting a coating mixture flow and to pull back built- up coating
material mixture from a location between a current collector and a coating
head using shut-off valve movement between open and closed positions, as
specified in claim 27 (App. Br. 19).
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In making the assertions set forth in the Answer, the Examiner has
seemingly taken at least some of the applied references’ disclosures out of
context without providing persuasive reasoning to support the contention
that the combination thereof would have led one of ordinary skill in the art
to the here claimed subject matter. For example, the Examiner does not
fairly articulate how the diaphragm movement and draw-in chamber of the
coating die taught by Shinozaki teaches or suggests the claim 27 shut-off
valve arrangement and movement between open and closed positions
relative to a containing hole to one of ordinary skill in the art, much less why
the coating die structure of Shinozaki would have been recognized by one of
ordinary skill in the art as being applicable to a particular modification of the
disparate electrode collector coating method taught by Andersen so that the
claimed method would have obviously resulted from such a modification of
Andersen’s method.
On this record, we cannot sustain the Examiner’s obviousness
rejections.
CONCLUSION
Appellants have established reversible error in the Examiner’s
obviousness rejections by their arguments furnished in the Appeal Brief and
Reply Brief, which arguments reasonably show that the Examiner has not
discharged the burden of establishing a prima facie case of obviousness for
the claimed subject matter based on the disparate prior art evidence relied
upon coupled with the asserted rationales for combining selected portions
thereof.

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ORDER
The Examiner’s decision to reject claims 12-16, 18-20, 22, and 32-37
under 35 U.S.C. § 103(a) as being unpatentable over Andersen in
combination with either Trest or Ichikawa, further in combination with
Takeno; to reject claim 21 under 35 U.S.C. § 103(a) as being unpatentable
over Andersen in combination with either Trest or Ichikawa, further in
combination with Takeno and Sommer; and to reject claims 27 and 28 under
35 U.S.C. § 103(a) as being unpatentable over Andersen in combination
with either Trest or Ichikawa, further in combination with Takeno and
Shinozaki is reversed.
REVERSED

tc/cam

ROBERT J. DEPKE
LEWIS T. STEADMAN
ROCKEY, DEPKE & LYONS, LLC
SUITE 5450 SEARS TOWER
CHICAGO, IL 60606-6306
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