Ex Parte Sugita

Board of Patent Appeals and Interferences

Jun 29, 2004

09528986 (B.P.A.I. Jun. 29, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUAKI SUGITA

____________

Appeal No. 2004-0949
Application No. 09/528,986
____________

ON BRIEF
____________

Before WALTZ, DELMENDO and PAWLIKOWSKI, Administrative Patent
Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-8. Claim 1 is
representative of the subject matter on appeal and is set forth
below:
1. A sealed battery, comprising:
a generator element that is an electrode group
impregnated with electrolyte;
an external casing that has an opening and
encloses the generator element;
a closure cap for sealing the opening, the
closure cap having a gas release valve that is formed

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by covering a gas release hole in the closure cap with
a thin film; and
a shielding member that is located between the
thin film and the generator element to protect the
thin film from the electrolyte so as to secure a gas
channel from an internal space of the external casing
to the gas release hole.

The examiner relies upon the following references as
evidence of unpatentability:
Wakabe et al. (Wakabe) 6,136,464 Oct. 20, 2000
Matsushita JP07022013 Jan. 24, 1995
(Japanese Patent Publication)1

Claims 1-8 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103, as
being obvious of over Wakabe.
Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 103
as being obvious over Matsushita.
We have carefully reviewed the answer, the brief, and the
reply brief, and the applied references, in making our
determinations set forth below.

I. The 35 U.S.C. § 102/ § 103 rejection over Wakabe
We refer to pages 3-4 of the answer regarding the
examiner’s position for this rejection. In particular, in one
embodiment of Wakabe, the examiner finds that Wakabe discloses a
valve that includes a thin film cover, that is penetrated by a
cutting device, and the examiner refers to Figures 4, 8 and 9 of

1 We rely upon and cite from a computer-assisted English translation of this document, previously made of record.
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Wakabe in connection with this embodiment. The examiner states
that the charge-discharge lead 102 is, in effect, appellant’s
claimed thin film. The examiner states that the cutting device
103 acts as a parallel barrier formed between the electrode
assembly and the cover vent. Finally, the examiner states that
packing material located on the bottom of the opening serves as
the barrier formed between the electrode assembly and the cover
vent, and this packing material is porous which allows for gas
to exit through the vent hole and these materials prevent the
electrolyte from directly contacting the thin metal cover.
Beginning on page 5 of the answer, the examiner further
explains that the cutting device 103 acts as a parallel barrier
for shielding thin film 102 from the electrolyte in the
generator element as depicted in Figures 4 and 8-10. On page 6
of the answer, the examiner states that the cutting device 103
is the shielding member located between the thin film 102 and
the electrode assembly. The examiner refers to Figure 14
regarding another embodiment of Wakabe and states that the
packing member depicted therein (item (207)) functions as a
shielding member located between the electrode assembly and the
thin film (209).
On page 4 of the answer, the examiner states that Wakabe
may not clearly show the embodiment wherein the shielding member
is a plate, set in parallel with the thin film (appellants’
claim 3), wherein the thin film is on the exterior of the casing
elements, but concludes it would have been obvious to combine
the embodiments of Wakabe to include the cutting device as a
parallel barrier formed between the electrode assembly and the
cover vent, wherein the cover vent has a thin metal cover on the
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exterior of the hole, as shown in Figure 14. The examiner
states that the exterior cover would also prevent leakage of
electrolyte, and the cutting device would prevent the direct
contact of the electrolyte.
On page 6 of the brief, appellant states that the examiner
refers to Wakabe’s charge-discharge lead 102 and cutting device
103, which are located below the gas vent hole V in case cover
108. Appellant states that the charge-discharge lead 102 is
designed to be cut by cutting device 103. Appellant states that
the purpose of the cutting device 103 is to interrupt current
flow, and not to release gas. Appellant concludes, therefore,
that these elements do not represent a gas release valve as
recited in claim 1.
Our comments are set forth below.
Claim 1 requires a sealed battery, comprising:
(1) a generator element that is an electrode group
impregnated with electrolyte; (2) an external casing that
has an opening and encloses the generator element; (3) a
closure cap for sealing the opening, the closure cap having
a gas release valve that is formed by covering a gas
release hole in the closure cap with (4) a thin film; and
(5) a shielding member that is located between the thin
film and the generator element to protect the thin film
from the electrolyte so as to secure a gas channel from an
internal space of the external casing to the gas release
hole.
We also note that a claim is anticipated when each and
every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art
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reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
Here, the examiner does not explain how each and every
element recited in claim 1 is disclosed by Wakabe. In
particular, if charge-discharge lead 102 corresponds to
appellant’s claimed thin film, and if cutting device 103
corresponds to the claimed shielding member, the examiner does
not explain what component in Wakabe is the closure cap. Also,
once the thin film 102 is punctured, cutting device 103 is no
longer located between the thin film and the generator element.
Hence, the examiner has not met his burden. Id. The examiner’s
obviousness rejection fails to explain how modification of
Wakabe (regarding the above-mentioned deficiencies) would have
been obvious.
In view of the above, we therefore reverse the anticipation
and obviousness rejections of claims 1-8 over Wakabe.

II. The Obviousness Rejection over Matsushita
We refer to pages 4-5 and 7 of the answer regarding the
examiner’s position for this rejection. We observe that the
examiner states that Matsushita does not teach “a cover hole to
be covered with a thin film”. Yet, the examiner states that
“[i]t would be obvious to one skilled in the art at the time the
invention was made to include a shielding member for preventing
the liquid electrolyte of a battery from exiting the cell or
coming into contact . . .”. Answer, pages 4-5. Hence, the
examiner recognizes a deficiency found in Matsushita (a cover
hole to be covered with a thin film). Yet, the examiner does
not explain how this deficiency is made obvious; rather, the
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examiner explains how inclusion of a shielding member would have
been obvious. That is, the examiner does not remedy the
deficiency he finds in Matsushita.
We note that in presenting a proper prima facie case of
obviousness, the examiner must make a comparison between the
scope of the claim (with respect to every claimed element) and
the teachings of the applied art to determine whether a prima
facie case of obviousness exists based upon such a comparison.
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). In
the instant case, the examiner’s rejection does not provide us
with such a comparison. The examiner does not address each
element of claim 1 and discuss whether or not a particular
element is taught, or not taught, by Matsushita, and, then, why
any element not taught, would have been obvious. For example,
if component 9 is the thin film, the examiner has not explained
whether or not Matsushita teaches the claimed closure cap also.
Nor has the examiner explained why it would have been obvious to
modify the battery of Matsushita to include a closure cap.
Because of these failings found in the examiner’s rejection, we
reverse the obviousness rejection.
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III. Conclusion
The rejection of claims 1-8 under 35 U.S.C. § 102(e) as
being anticipated by, or in the alternative, under 35 U.S.C.
§ 103 as being obvious over Wakabe is reversed.
The rejection of claims 1-2 and 4-5 under 35 U.S.C. § 103
as being obvious over Matsushita is reversed.

REVERSED

THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
ROMULO H. DELMENDO ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
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