Ex Parte Woehrle et al

Patent Trial and Appeal Board

Oct 16, 2017

13704610 (P.T.A.B. Oct. 16, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/704,610 03/07/2013 Thomas Woehrle 2178-0585 4122
10800 7590 10/16/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CULLEN, SEAN P
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
10/16/2017 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 THOMAS WOEHRLE, JOACHIM FETZER,
and STEPHAN LEUTHNER
____________________

Appeal 2017-000638
Application 13/704,6101
Technology Center 1700
____________________

Before JEFFREY T. SMITH, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–6 and 9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Robert Bosch GmbH and Samsung SDI Co., Ltd. as the
real parties in interest. Appeal Br. 2.
2 In our Opinion, we refer to the Specification filed December 15, 2012
(“Spec.”); the Final Action mailed January 20, 2016 (“Final Act.”); the
Appeal Brief filed June 15, 2016 (“Appeal Br.”); the Examiner’s Answer
mailed August 10, 2016 (“Ans.”); and the Reply Brief filed October 10,
2016 (“Reply Br.”).
Appeal 2017-000638
Application 13/704,610

2
The claims are directed to lithium ion cells. Claim 1, reproduced
below with disputed limitations italicized, is illustrative of the claimed
subject matter:
1. A lithium ion cell comprising:
a negative electrode;
a positive electrode; and
a separator arranged between the negative electrode and
the positive electrode, and including at least one inorganic
solid-state electrolyte layer which conducts lithium ions
positioned between a first negative electrode facing polyolefin-
based polymer layer and a second positive electrode facing
polyolefin-based polymer layer, wherein
the first negative electrode facing polyolefin-based
polymer layer is in direct contact with the negative electrode,
and
the second positive electrode facing polyolefin-based
polymer layer is in direct contact with the positive electrode.
Appeal Br. 15 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Ying et al. (“Ying”) US 6,277,514 B1 Aug. 21, 2001
Lee et al. (“Lee”) US 2009/0111025 A1 Apr. 30, 2009
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections: (1) claims 1, 2, and 9 over 35 U.S.C § 102(b) as anticipated by
Ying; and (2) claims 3–6 over 35 U.S.C. § 103(a) as obvious under Ying in
view of Lee. Final Act. 2, 3.
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OPINION
§ 102(b) Rejection of claims 1, 2, and 93
The Examiner finds that Ying teaches all elements of claim 1,
including a separator with one polyolefin-based polymer layer in direct
contact with the negative electrode and another polyolefin-based polymer
layer in direct contact with the positive electrode. Final Act. 2–3 (citing
Ying col. 5, l. 56–col. 6, l. 5). The Examiner finds that Ying discloses a
separator sandwiched between an anode and a cathode. Id. at 7 (citing Ying
col. 5, ll. 56–60: “[T]he invention pertains to a separator for use in an
electric current producing cell, wherein the cell comprises . . . an electrolyte
element interposed between the cathode and the anode . . . .”). The
Examiner finds that Ying’s disclosure of “at least one protective coating
layer” indicates that more than one protective coating layer may be present,
and may be composed of polyolefins (a polyolefin-based polymer layer).
Ans. 2. The Examiner finds that Ying’s Figure 11, illustrating a free
standing separator including a microporous pseudo-boehmite layer between
two protective coating layers, discloses that two protective layers in Ying
need not be placed only directly next to each other. Id. at 3.
An annotated version of Ying’s Fig. 11 is provided below:

3 Appellants do not provide substantive separate arguments for the
patentability of claims 2 and 9. We select independent claim 1 as
representative and limit our discussion to independent claim 1.
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Application 13/704,610

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Fig. 11 is a sectional view of one embodiment of Ying as a free
standing separator comprising (a) a protective coating layer 30, (b) a
microporous pseudo-boehmite layer 20, and (c) a protective coating layer
34. Ying col. 11, ll. 41–45.
The Examiner finds that a separator including two protective layers
sandwiching the microporous pseudo-boehmite layer, which is itself
sandwiched between an anode and a cathode, would have a first protective
layer contacting the anode and a second protective layer contacting the
cathode. Final Act. 3.
The Examiner finds that Ying discloses that the electric current
producing cell (of Ying) may be manufactured according to copending U.S.
patent application Ser. No. 09/215,030 (now U.S. 6,190,426 (the ’426
patent” or “Thibault”)) to Thibault. Ans. 3 (citing Ying col. 12, ll. 5–23).
The Examiner refers to Thibault as evidence that placing a separator in
contact with an anode on one side and a cathode on the opposite side was
known at the time of Appellants’ invention. See id. Ying also teaches this
layered structure. Ying col. 33, ll. 16–17. Appellants do not dispute that
one of ordinary skill in the art at the time of the invention would have this
knowledge. See, generally, Appeal Br., Reply Br.
Appellants argue that Ying fails to disclose the two polyolefin-based
polymer layers, one in direct contact with the negative electrode and one in
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direct contact with the positive electrode. Appeal Br. 4–5. More
specifically, Appellants contend that Ying discloses a separator with a single
protective layer on a side opposite the cathode, discloses two protective
layers in direct contact with each other, discloses contact between a
protective layer and an anode, but fails to disclose a protective layer in direct
contact with a positive electrode (cathode).4 Id.
An annotated version of Ying’s Fig. 3 is provided below:

Fig. 3 is a sectional view showing a protective coating 30 and a
microporous pseudo-boehmite layer 20 on a substrate 10 comprising a
cathode active layer 15. Ying col. 10, ll. 59–63. Ying therefore discloses a
protective coating layer contacting a cathode.
The majority of Appellants’ briefing is an effort to draw a distinction
between Ying’s disclosure of an electrolyte element interposed between a
cathode and an anode, the electrolyte element comprising a separator and an
electrolyte, and claim 1’s requirement of direct contact between a polymer
layer and an electrode. Appeal Br. 4–11. “Direct contact” is not a phrase
used anywhere in the Specification. See, generally, Spec. “Contact” is used
in the Specification only in terms of electrical contact with an electrode.

4 Appellants identify the positive electrode as a cathode and the negative
electrode as an anode in the Specification. Spec. 2, l. 8.
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See, e.g., id. at 14, ll. 1–20. Appellants do not provide any special meaning
for “direct contact.” Rather, in the Specification the separator is described
as arranged “between” the negative electrode and the positive electrode.
Spec. 2, ll. 6–10; 11, ll. 8–14; 21, ll. 19–25. Appellants cite to Figure 4 of
the application as showing a separator with one polyolefin-based polymer
layer in direct contact with the negative electrode and another polyolefin-
based polymer layer in direct contact with the positive electrode. Figure 4 is
reproduced below:

Figure 4 shows an embodiment of the claimed invention wherein the
separator (3) has a layer system composed of an inorganic solid-state
electrolyte layer (4) which conducts lithium ions and two polymer layers
(5a, 5b) with the inorganic solid-state electrolyte layer (4) “which conducts
lithium ions being arranged between the two polymer layers” (5a, 5b). Spec.
24, ll. 18–25 (emphasis added). Element (1) is a negative electrode and
element (2) is a positive electrode. Spec. 23, ll. 5–8.
Ying describes the separator as “interposed between the cathode and
the anode.” Ying col. 5, ll. 56–60. “Interposed” means “placed between.”
Oxford English Dictionary,
http://www.oed.com/view/Entry/98193?rskey=rmyXJI&result=2#eid. Ying
describes a protective coating layer between a separator and an anode. Ying
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col. 12, ll. 34–39. Ying also illustrates a protective coating layer between a
separator and a cathode. Ying Fig. 3.
Nowhere in the application is the claimed invention described or
illustrated as differing from the lithium ion cell described and illustrated in
Ying.
The proper test of a publication as a § 102(b) bar is “whether one
skilled in the art to which the invention pertains could take the description of
the invention in the printed publication and combine it with his own
knowledge of the particular art and from this combination be put in
possession of the invention on which a patent is sought.” In re Elsner, 381
F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 936
(CCPA 1962)). In view of the publication, one must be able to make the
claimed invention without undue experimentation. Elsner, 381 F.3d at 1128.
Ying’s disclosure of a separator—that may have a protective coating
layer (polymer layer) on each side of an electrolyte element—interposed
between a cathode and an anode would put one of ordinary skill in the art in
possession of the invention of claim 1 when combined with the artisan’s
knowledge.
We do not agree with Appellants that the Examiner raised a new
ground of rejection in referencing the ’426 patent. See Reply Br. 2.
Although anticipation does not permit an additional reference to supply a
missing claim limitation, additional references may be used to confirm the
content of the allegedly anticipating reference. Studiengesellschaft Kohle,
mbH v. Dart Indus., Inc., 726 F.2d 724, 727 (Fed. Cir. 1984). The Examiner
relies on the ’426 patent simply as evidence that the layered structure of a
separator between a cathode and an anode was known in the art at the time
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of the instant invention. See Ans. 3–4. The Examiner notes that Ying
discloses this, as well. See id. at 4.
Appellants argue that the Examiner (1) “admit[s] that Ying fails to
expressly teach direct contact,” and (2) introduces an argument that direct
contact is inherent in Ying. Reply Br. 4. These arguments are not
persuasive. The Examiner in the Answer was responding to Appellants’
argument that “there is no inference of contact with the word ‘interposed.’”
Ans. 5 (citing Appeal Br. 5). As stated above, a person of ordinary skill in
the art would have recognized that a separator interposed between and in
contact with an anode and cathode was known at the time of Appellants’
invention.
Anticipation is a question of fact. In re Suitco Surface, Inc., 603 F.3d
1255, 1259 (Fed. Cir. 2010). On the record above, the Examiner did not
reversibly err in finding that Ying anticipates claim 1.

§ 103(a) Rejection of claims 3–6 over Ying, further in view of Lee
The Examiner finds that claims 3–6 are unpatentable over Ying, as
applied to claim 1, and further in view of Lee. Final Act. 3. The Examiner
finds that Ying discloses all claim limitations in claim 1. Id.
Appellants argue that Lee fails to correct the deficiencies of Ying with
respect to claim 1. Appeal Br. 13. Because we are unpersuaded of
reversible error in the Examiner’s rejection of claim 1, Appellants’ position
as to this rejection is also without merit. Accordingly, we sustain the
rejections of claims 3–6.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1–6 and 9 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)(1)(iv).
AFFIRMED