Ex Parte TSURUTA et al

Patent Trial and Appeal Board

May 31, 2018

14137667 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/137,667 12/20/2013 Shogo TSURUTA
21254 7590 06/01/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
G230200NHANUS 2941
EXAMINER
HARRIS, GARY D
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
06/01/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOGO TSURUT A,
MASAMITSU TONONISHI, and
RYUTARO NISHIKAWA
Appeal2017-008688
Application 14/137,667 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-12.2
1 Appellant is the Applicant, GS YUASA INTERNATIONAL LTD., which,
according to the Appeal Brief, is the real party in interest. Appeal Brief
Appeal Br. 1.
2 Claims 13-20 have been withdrawn from consideration pursuant to a
restriction requirement. Final Office Action (mailed August 17, 2016),
hereinafter "Final Act.," 2.
Appeal2017-008688
Application 14/137,667
We have jurisdiction under 35 U.S.C. § 6(b ). 3
We AFFIRM.
The subject matter on appeal relates to sealing member caps (see, e.g.,
claim 1 ). The Inventors disclose that electric storage devices include a cell
case having an inlet hole through which electrolyte is injected before the
inlet hole is sealed. Spec. ,r 2. The Inventors state that a resin gasket (i.e.,
sealing member cap) may be attached over an outer circumference of a
sealing rivet but the gasket may be damaged when it is deformed in a
direction perpendicular to an axial direction of the gasket during sealing of
the inlet hole. Id. ,r,r 2-3. In view of this, the Inventors disclose a sealing
member cap that seals a through hole of a cell case with reduced damage to
the sealing member cap. Id. ,r,r 4, 6, 9.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A sealing member cap to be inserted into a through hole
of a cell case of an electric storage device together with a
sealing member, the sealing member cap comprising:
an insertion portion having a column shape and including
a recess into which the sealing member is inserted, the insertion
portion includes:
a body section located in the through hole when
the sealing member cap is inserted into the through hole;
and
a large cross-section section located inside the cell
case when the sealing member cap is inserted into the
3 Our Decision refers to the Specification filed December 20, 2013 (Spec.),
the Final Office Action mailed August 17, 2016 (Final Act.), Appellant's
Appeal Brief filed January 13, 2017 (Appeal Br.), the Examiner's Answer
dated March 31, 2017 (Ans.), and Appellant's Reply Brief filed April 27,
2017 (Reply Br.).
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Appeal2017-008688
Application 14/137,667
through hole,
wherein an entirety of the sealing member cap includes a
resin, and
wherein the recess is larger in a cross-sectional area in a
plane perpendicular to an axial direction of the insertion portion
at the large cross-section section than at the body section.
REJECTIONS ON APPEAL
I. Claims 1-10 and 12 under 35 U.S.C. § I02(b) as being
anticipated by Martin; 4 and
II. Claim 11 under 35 U.S.C. § I03(a) as being unpatentable
over Martin.
B. DISCUSSION
Rejection I
Claims 1-10 and 12 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Martin.
The Examiner finds Martin discloses a sealing member cap, citing the
end cap insert 120 depicted in Figure 3 of Martin. Final Act. 3--4.
Appellant contends Martin does not disclose a sealing member cap
"wherein an entirety of the sealing member cap includes a resin," as recited
in claim 1, because Martin discloses an end cap insert made of nickel that is
coated with an adhesive polymer. Appeal Br. 4--5; Reply Br. 1-2. In view
of this, Appellant asserts "the plain meaning of the language of the
independent claims is clearly not satisfied, as that language would be
interpreted by one having ordinary skill in the art." Appeal Br. 5.
4 Martin et al., US 2010/0266893 Al, published Oct. 21, 2010 ("Martin").
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Application 14/137,667
Appellant's arguments are unpersuasive. The Examiner finds Martin
discloses that the end cap insert is entirely coated with a non-porous,
adhesive polymer coating, which is a resin. Ans. 3. Martin discloses that
the end cap insert 120 may comprise iron, steel, nickel plated steel, nickel,
stainless steel, and copper or alloys of copper. Martin ,r 36. Martin further
discloses that when the end cap insert is made of a material susceptible to
corrosion (e.g., steel or nickel plated steel), a non-porous adhesive polymer
coating, which can be an epoxy or acrylic, may be used to protect the
material from corrosive environments. Id. Therefore, Martin's disclosure
supports the Examiner's finding that Martin's end cap insert is made of a
material that is coated with a resin ( e.g., an epoxy or acrylic) and therefore
includes a resin. Moreover, the Examiner's position that an entirety of the
end cap insert would be coated is reasonable because Martin teaches that the
coating is provided to protect the end cap insert from corrosion (i.e., an
entirety of the end cap would be coated in order for corrosion protection to
be effective). As a result, an entirety of Martin's end cap insert includes the
resin coating, as recited in claim 1.
To the extent Appellant is asserting that the language "wherein an
entirety of the sealing member cap includes a resin" should be interpreted to
mean the sealing member cap is made only of resin, 5 the plain meaning of
5 Paragraphs 41, 53, 65 of the Specification, for instance, describe a cap
made of a resin. However, interpreting claim 1 as requiring the sealing
member cap to be made only of resin in view of such disclosures would be
an importation of features from the Specification into the claims, not the
broadest reasonable interpretation of the claims in light of the Specification.
Although claims are to be interpreted in light of the specification, limitations
from the specification are not to be read into the claims. See In re Van
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Application 14/137,667
the claim terms do not support such a construction. For instance, "[a]s a
patent term of art, 'includes' means 'comprising.' ... Neither includes, nor
comprising, forecloses additional elements that need not satisfy the stated
claim limitations." SanDisk Corp. v. Memorex Products, Inc, 415 F.3d
1278, 1284 (Fed. Cir. 2005) (citations omitted). Thus, the language
employed by Appellant permits the claimed sealing member cap to include
materials other than a resin.
As a result, Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claim 1. Appellant does not argue dependent
claims 2-10 and 12 separately from claim 1. Appeal Br. 5.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's rejection of claims 1-10 and 12 under
§ 102(b) as being anticipated by Martin.
Rejection II
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Martin. Appellant does not present separate arguments for claim 11.
Id. Therefore, for the reasons discussed above and those set forth in the
Examiner's Answer, we sustain the Examiner's § 103(a) rejection of claim
11 over Martin.
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Moreover, such an
interpretation would disregard the term "includes" in claim 1.
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Application 14/137,667
C. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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