Ex Parte Takeuchi

Board of Patent Appeals and Interferences

Sep 10, 2004

09176374 (B.P.A.I. Sep. 10, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ESTHER S. TAKEUCHI
____________
Appeal No. 2004-1908
Application No. 09/176,374
____________
ON BRIEF
____________
Before PAK, KRATZ and PAWLIKOWSKI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-19, which are all of the claims pending in
this application.
BACKGROUND
Appellants’ invention relates to a method of making an
electrode assembly for an electrochemical cell, an electrode
assembly for an electrochemical cell and a solid cathode liquid
electrolyte alkali metal high rate cell. An understanding of the
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Application No. 09/176,374
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invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. A method of making an electrode assembly for an
electrochemcial cell comprising:
a) providing a combination of an elongated anode
electrode, an elongated cathode electrode and separator
therebetween in a face-to-face relationship wherein one
of the anode and cathode electrodes is shorter in
length than the other of the anode and cathode
electrodes;
b) folding the combination using a mandrel to form
an anode-cathode electrode assembly having a jellyroll
configuration, said mandrel being of substantially
rectangular cross-section having a pair of
substantially parallel and planar oppositely-facing
surfaces;
c) said folding the combination including a first
step of folding the longer one of the electrodes on
itself about the mandrel so that the separator on said
longer one of the said electrode contacts both of said
oppositely-facing surfaces of said mandrel and
subsequent steps of folding both of the electrodes
about the mandrel to form the anode-cathode electrode
assembly; and
d) so that upon removal of the mandrel in the
event any portion of the separator contacted by the
mandrel is impaired only portions of the longer one of
the electrode can contact each other thereby preventing
any electrical short circuit due to the separator being
impaired in a cell containing said anode-cathode
electrode assembly.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Machida et al. (Machida) 4,709,472 Dec. 01, 1987
Takeuchi et al. (Takeuchi) 5,549,717 Aug. 27, 1996
Claims 5, 6, 8, 9 and 16-18 stand rejected under 35 U.S.C.
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Application No. 09/176,374
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§ 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as invention. Claims 1-19 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Machida in
view of Takeuchi.
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by
appellant and the examiner concerning the issues before us on
this appeal.
OPINION
We find ourselves in agreement with appellant’s position for
each of the maintained rejections because the examiner has failed
to carry the burden of establishing a prima facie case in each
instance. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Accordingly, we will not sustain
the examiner's rejections. Our reasoning follows.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of
appellant’s specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
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Application No. 09/176,374
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of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner maintains that “a curved surface cannot lie
within a plane” in asserting that claims 5, 6, 8, 9 and 16-18 are
indefinite.
However, a curved surface is not required to be planar by
the claim language in question as the examiner appears to
suggest. Rather, the so rejected claims require a surface that
has a curved edge (“a curved edge surface”) to lie within a
plane. See, e.g., the planar surface having a curved edge in
appellant’s drawing figure 11. Thus, we do not agree that the
examiner’s expressed concern amounts to a violation of the
provisions of the second paragraph of 35 U.S.C. § 112.
Consequently, we reverse the 35 U.S.C. § 112, second paragraph
rejection put forward by the examiner.
Rejection under 35 U.S.C. § 103(a)
Machida discloses a method of manufacturing a spiral
electrode assembly wherein, in a first winding step, a separator
portion of one electrode that is longer than the diameter of a
spool is wound about the spool and then a leading edge portion of
a second electrode (element 4, Figure 5) is begun to be wound
around the spool together with the electrode that includes the
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wound separator portion. The electrode that includes the wound
separator portion is located rearwardly of the leading edge
portion of the second electrode during the winding as depicted in
drawing Figure 5 of Machida. The spool is removed after the
winding is complete resulting in a tightly wound spiral electrode
assembly, which assembly can be thereafter incorporated in a
cylindrical cell. See column 4, line 58 through column 5, line
51 of Machida.
The examiner recognizes that Machida does not employ a
rectangular mandrel having a pair of opposite and planar faces in
forming an electrode assembly as required by claim 1. Nor does
Machida teach or suggest that the electrode assembly should be
formed into a prismatic shaped electrode assembly having a
rectangular pocket or two substantially flat sections of longer
electrode facing each other. Nor does Machida teach a cell
including such a prismatic electrode assembly, as claimed by
appellant.
In an attempt to remedy the acknowledged deficiency of
Machida (final rejection, page 4), the examiner additionally
relies on the teachings of Takeuchi.
Takeuchi discloses a prismatic cell with the shaping thereof
being done simultaneously with the winding thereof by using a
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rectangular mandrel. See column 6, lines 32-54 of Takeuchi.
Alternatively, Takeuchi discloses that shaping of the cell can
occur after a winding operation by pressing the cell after
forming a spirally wound cell. See column 6, lines 60-67 of
Takeuchi.
According to the examiner (final rejection, pages 4 and 5),
the invention as a whole would have been obvious
to one of ordinary skill in the art at the time the
invention was made because one of skill [in the art]
would have known that the anode-cathode subassembly
could be shaped to have a rectangular cross-section
after being formed on a mandrel of non-rectangular
cross-section. Takeuchi teaches an alternate method
for shaping the subassembly. The method includes after
the subassembly has been wound (on a circular mandrel
for example) or coiled the subassembly is placed in a
suitable pressing fixture including jaws or pressing
members which act on opposite surface portions of the
subassembly to force or shape the combination to have a
substantially rectangular cross-section. See col. 6,
lin[es] 59-67 and Fig.13 of the Takeuchi reference.
Therefore[,] one of [ordinary] skill [in the art] would
be motivated to combine Machida and Takeuchi because
the Takeuchi reference discloses shaping an anode-
cathode subassembly to have a rectangular cross section
by using a mandrel of rectangular cross-section or by
first forming the subassembly on a non-rectangular
mandrel and then pressing the subassembly to have a
rectangular cross-section.
Furthermore one of [ordinary] skill [in the art]
would be motivated to use the mandrel of rectangular
cross-section of Takeuchi for the mandrel of Machida
because Takeuchi teaches that if a rectangular shape is
desired a mandrel of rectangular cross-section may be
used or a circular subassembly may be pressed to obtain
the desired rectangular shape. Depending on the
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desired shape of the container in which the subassembly
is to be placed, one of [ordinary] skill [in the art]
would be motivated to alter the shape of Machida et al.
However, on this record, we disagree with the examiner’s
views on this matter. At the outset, we note that “Before the
PTO may combine the disclosures of two or more prior art
references in order to establish prima facie obviousness, there
must be some suggestion for doing so, found either in the
references themselves, or in the knowledge generally available to
one of ordinary skill in the art.” In re Jones, 958 F.2d 347,
350, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992); In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988).
Here, the examiner makes reference to Takeuchi to support
the asserted motivation for the proposed modification of Machida.
However, as pointed out by appellant, Machida (column 2, lines
62-65) expressly teaches that “the electrode members are not
forcibly bent anywhere. Therefore, the electrode members are not
damaged, and an objectionable short-circuit in the cell can be
prevented.”
Given that the examiner’s proposed modification would run
counter to the express disclosure of Machida that teaches against
bending the electrodes and that the examiner has not addressed
that conflict in the teachings of Machida and Takeuchi regarding
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bending the electrodes, it is our view that the examiner has not
fairly explained why the teachings of Takeuchi in combination
with Machida would have led one of ordinary skill in the art to
the examiner’s proposed modification, on this record.
From our perspective, the particularly identified teachings
of Takeuchi regarding the use of a flat sided mandrel and the
formation of a prismatic shaped cell, while obviously applicable
to the cell of Takeuchi, have not been shown by the examiner as
suggesting a modification of Machida’s specific cell or method of
making same in a manner so as to arrive at the here claimed
subject matter.
Moreover, the examiner has not fairly addressed the
specifics of each of appellant’s claims and each of the applied
references in explaining how the teachings of Takeuchi would have
suggested particular modification(s) of Machida in a manner so as
result in appellant’s claimed subject matter with a reasonable
expectation of success in so doing.
For example, appellant’s claim 1 requires a method wherein
the longer electrode is first folded on itself about a
substantially rectangular cross-section mandrel having opposing
surfaces so that a separator on the longer electrode contacts
both of the oppositely facing surfaces of the mandrel. Even if
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Application No. 09/176,374
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we could agree with the examiner that the combination of Takeuchi
with Machida would have suggested using a rectangular mandrel in
Machida, which we do not, the examiner has not fairly explained
how that combination of references would have taught or suggested
the particular folding steps of appellant’s claim 1 together with
the claim 1 requirement that “only portions of the longer one of
the electrode[s] can contact each other” (claim 1, step d) after
removal of the mandrel and in the event of impairment of a
portion of the separator that was contacted by the mandrel.
In this regard, appellant’s specification cannot be used as
an instruction manual or template to piece together the teachings
of the prior art so that the claimed invention is rendered
obvious. See In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed.
Cir. 1992).
For the foregoing reasons, it is our determination that the
examiner has not established a prima facie case of obviousness.
Accordingly, we will not sustain the § 103(a) rejection before
us.
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CONCLUSION
The decision of the examiner to reject claims 5, 6, 8, 9 and
16-18 under 35 U.S.C. § 112, second paragraph as being indefinite
for failing to particularly point out and distinctly claim the
subject matter which applicant regards as invention; and to
reject claims 1-19 under 35 U.S.C. § 103(a) as being unpatentable
over Machida in view of Takeuchi is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
MARTIN G. LINIHAN
HODGSON RUSS ANDREWS WOODS & GOODYEAR
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