Ex Parte Skinlo et al

Board of Patent Appeals and Interferences

Jul 26, 2011

10810075 - (D) (B.P.A.I. Jul. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID M. SKINLO, BALJIT S. NAT AND
HIROYUKI YUMOTO
________________

Appeal 2010-001887
Application 10/810,075
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1 and 3-7. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The disclosed invention relates generally to electric storage batteries
and more particularly to construction of a battery having a uniformly wound
electrode assembly. Claim 1 is illustrative of the claimed invention:
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1. An electric storage battery, comprising:
an electrode assembly in a case, the electrode assembly
including: an elongate pin;
first electrode strip and a second electrode strip wound
together to form a spiral roll, each electrode strip having
inner and outer ends,
the first electrode strip attached to the pin directly or via
an interface material; the first electrode strip including
a substrate having a first face and a second face,
the first face having a coated portion coated by a coating
having a coating thickness,
the first face having an uncoated portion on which the
coating is not positioned,
the uncoated portion being at the inner end of the first
electrode strip, the coating including an active material;
a first insulating spacer positioned on at least a portion of
the uncoated portion and/or on at least a portion of the
interface material,
the first insulating spacer in a space between the first face
of the substrate and the second electrode strip;
a separator in the space between the first face of the
substrate and the second electrode strip; and
the substrate is not present in the space between the first
face of the substrate and the second electrode strip.
The Examiner maintains the following rejections1:

1 In accordance with MPEP § 1215.03, Appellants withdrew the appeal of
claims 2 and 14-19. (Remarks made in paper filed, Oct. 14, 2009).
Appellants maintain the appeal with respect to claims 1 and 3-7. A
withdrawal of the appeal as to some of the claims on appeal operates as an
authorization to cancel those claims from the application and the appeal
continues as to the remaining claims. Accordingly, this appeal is dismissed
as to claims 2 and 14-19. See also Ex Parte Ghuman, 88 USPQ2d 1478
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Claims 1 and 5 stand rejected under 35 U.S.C. §103 as being
unpatentable over the combined prior art of Skinlo (U.S. 2003/0134184
published Jul. 17, 2003) in view of Devitt (U.S. 3,669,746 issued Jun. 13,
1972).
Claim 3 stands rejected under 35 U.S.C. §103 as being unpatentable
over the combined prior art of Skinlo in view of Devitt as applied to claim 1
and further in view of Carlson (U.S. 7,066,971 issued Jun. 27, 2006).
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combined prior art of Skinlo in view of Devitt as applied to claim 1
and further in view of LaFollette (U.S. 2004/0018421 published Jan. 29,
2004).
Claims 1 and 3-7 stand rejected under the first paragraph of 35 U.S.C.
§112 for failing to comply with the written description requirement.
These rejections are addressed below. Claim 1 is the sole independent
claim on appeal.
MAIN ISSUES
1) Did the Examiner err in determining that the combined prior art
teaches or suggests the use of “a first insulating spacer” and “a separator” as
recited in claim 1?
2) Did the Examiner err in determining that the claims fail to comply
with the written description requirement under the first paragraph of 35
U.S.C. §112 because Figure 22 fails to describe the negative limitation “the

(BPAI 2008). Upon return of the application to the jurisdiction of the
Examiner, the Examiner should cancel claims 2 and 14-19.

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substrate is not present in the space between the first face of the substrate
and the second electrode strip,” as recited in independent claim 1?
We answer these questions in the affirmative.

REJECTIONS UNDER 35 U.S.C. §103
Principles of Law
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). As stated by the Federal Circuit:
[The claims] are part of "a fully integrated written
instrument," ... consisting principally of a specification
that concludes with the claims. For that reason, claims
"must be read in view of the specification" .... [T]he
specification "is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term."
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)
(internal citations omitted).
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
Analysis
We have thoroughly reviewed each of Appellants’ arguments for
patentability. We are in agreement with the Appellants that the Examiner
identified insufficient evidence to establish that the combination of Skinlo
and Devitt renders the claimed invention obvious to one of ordinary skill in
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the art within the meaning of § 103. We add the following primarily for
emphasis.
Appellants argue that the combination of Skinlo and Devitt fails to
teach or to suggest “both a spacer and a separator in the claimed space” as
required by the claim language (App. Br. 12). Appellants assert, and we
agree, that the claim language requires that the recited space “include a
spacer in addition to a separator.” (App. Br. 12, emphasis added). Although
the Examiner finds that the multi-layer separator of Devitt functions the
same as the combined individual layers recited by Claim 1 (i.e., a separator
layer can function as a mechanical spacer) (see Ans. 7), Appellants argue
that the combination of Skinlo in view of Devitt “merely results [in] the
recited space having a multi-layer separator instead of a single-layer
separator.” (App. Br. 12). Appellants’ argument that the claimed invention
requires two separate elements according to the claim language is persuasive
(App. Br. 12). Appellants’ position is supported by a preponderance of the
evidence (see, e.g., Spec. ¶0037 (“spacers 92, 94 serve to protect edges of
the electrodes and prevent them from damaging the separator”); see also
paras. 0038-0044; Figs. 10, 14-16, 22).
In sum, the plain meaning of the claim language, consistent with and
interpreted in light of the Specification, requires a distinct spacer and a
distinct separator.
Therefore, we are persuaded that the Examiner's interpretation of the
disputed claim language is not reasonable. As such, we cannot sustain the
obviousness rejections which rely on this flawed interpretation.
For the foregoing reasons and those presented by the Appellants in the
Briefs, the Examiner has not satisfied the initial burden of presenting a
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prima facie case of obviousness. Accordingly, the 35 U.S.C. §103 rejection
of claims 1 and 3-7 is reversed.
Because claim 1 is not rendered obvious under 35 U.S.C. §103 over
the combination of Skinlo in view of Devitt, we do not reach the issue of
whether or not the 37 C.F.R. 1.131 declaration was deficient.
The Examiner has not relied upon the other applied references to
correct this deficiency (e.g., the Examiner has not relied upon either Carlson
or LaFollette to teach or suggest these features). Accordingly, all of the
Examiner's 35 U.S.C. §103 rejections are reversed.
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Principles of Law
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
An applicant may show possession of the claimed invention by
describing the claimed invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. Lockwood v. American Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997). Drawings alone may provide a
written description of an invention as required by 35 U.S.C. § 112. Vas-
Cath, 935 F.2d at 1565.
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It is well-established that if the specification contains a description of
the claimed invention, although not in identical terms, then the examiner or
Board must provide reasons why one of ordinary skill in the art would not
consider the description sufficient. See In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996).
Whether the inventor has provided adequate written description, either
explicitly or inherently, must be determined from the disclosure considered
as a whole. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000).
Analysis
After review of the respective positions provided by Appellants and
the Examiner, we are in agreement with the Appellants that the Examiner
erred in rejecting claims 1 and 3-7 for failure to comply with the written
description requirement under the first paragraph of 35 U.S.C. § 112. We
add the following primarily for emphasis.
The Examiner states that there is no literal support in the Specification
for the limitation “the substrate is not present in the space between the first
face of the substrate and the second electrode strip.” See Ans. 12. However,
it is well established that literal support is not necessary to satisfy the written
description requirement. See, e.g., Vas-Cath, 935 F.2d at 1565 (stating that a
drawing may provide a 'written description' of an invention as required by 35
U.S.C. § 112).
Appellants rely upon Figure 22 for disclosure and illustration of the
claim scope (see App. Br. 15). Therefore, we will analyze the claim
language in light of Figure 22.
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Appeal 2010-001887
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places the first insulating spacer in the region between the substrate (32) and
the center of the battery. (Spec. Fig. 22, ¶0043). This interpretation is
consistent with and supported by the Specification because the first
insulating spacer (92) (and/or (94)) is located on an uncoated region of
substrate (32), which is only located at the center of the battery. (Spec. Fig.
22, ¶¶0037-0044). The claim also recites “a separator in the space between
the first face of the substrate and the second electrode strip.” (App. Br. 18).
The separator (132) is placed between the electrodes throughout the entire
battery (Spec. Fig. 22, ¶¶0037-0044).
In an amendment filed September 20, 2007, Appellants amended
claim 1 to contain the negative limitation “the substrate is not present in the
space between the first face of the substrate and the second electrode strip.”
This language simply reflects, as shown in Figure 22, that the substrate and
the second electrode strip are not in direct contact at any point throughout
the spiral-wound battery (See Spec. Fig. 22, ¶¶0037-0044). Indeed, this
interpretation is consistent with the Appellants’ Specification and with
spiral-wound batteries known in the art.
Therefore, as asserted by Appellants, an ordinary person skilled in the
art would have recognized that the Appellants had possession of the claimed
invention at the time of filing because the negative limitation at issue was
properly disclosed in Figure 22. Accordingly, the Examiner’s 35 U.S.C.
§112 rejection of claims 1 and 3-7 is reversed.
DECISION
We reverse the Examiner’s § 103 rejections of claims 1 and 3-7.
We reverse the Examiner’s § 112 rejection of claims 1 and 3-7.
REVERSED
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10

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