Ex Parte Yamashita et al

Patent Trial and Appeal Board

Aug 23, 2018

11303908 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/303,908 12/19/2005
25944 7590 08/27/2018
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Rikiya Yamashita
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.
123839.01 1071
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
08/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RIKIY A YAMASHITA, KAZUKI YAMADA,
and MASATAKA OKUSHITA
Appeal2017-000972
Application 11/303,908
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL G. McMANUS,
and SHELDON M. McGEE, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-15 of Application 11/303,908
under 35 U.S.C. § 103(a) (pre-AIA). Final Act. (Sept. 29, 2015) 2-8.
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6. A hearing was held on August
16,2018.
For the reasons set forth below, we REVERSE.
1 Dai Nippon Printing Co., Ltd., is identified as the real party in interest.
Appeal Br. 1.
Appeal2017-000972
Application 11/303,908
BACKGROUND
The present application generally relates to the packaging of batteries
such as lithium batteries. Spec. ,r 3. Lithium batteries are used in personal
computers, mobile telephones, and other mobile applications. Id. ,r 5. The
application indicates that prior art lithium batteries have been packaged in
pouches made of laminate sheets. Id. ,r 8. A lithium battery module is put in
the package, and peripheral parts of the package are heat-sealed. Id. ,r 9.
Lithium batteries typically have two leads (sometimes called "tabs")
protruding from the packaging for connection to external devices. Id. ,r 16.
Lead-insulating films are placed on the upper and lower surfaces of
the leads to enhance bonding of the leads to the packaging. Id. ,r 11, 50. A
figure from the Specification depicting lead-insulating films 6 is reproduced
below.
Spec., Fig. 4. Figure 4 depicts battery cell 3, leads 4, and lead-insulating
films 6. Id. ,r,r 49--50. Lead-insulating-films 6 are interposed between the
leads 4 and the external package. Id. ,r 50. A peripheral part of the package
is then heat-sealed such that the leads project outside the package. Id. ,r 49.
A figure showing heat-sealed peripheral portion 9 of the package 5 is
reproduced below.
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j
1
Spec., Figure 4. 2 Figure 4 depicts a battery 1 consisting of cells (not shown)
within a battery case (package) 5 after the heat sealing step. Spec. ,r 49.
The application indicates that prior art lead-insulating films were
somewhat prone to malfunction. Specifically, at times certain layers of the
package and the lead-insulating film were extruded during the heat sealing
process. As a result, an aluminum foil serving as the barrier layer and the
metal lead would come into contact and short-circuit the lithium battery. Id.
,r,r 54, 13. A short-circuit (S) between aluminum layer 12' and lead 4' is
depicted below.
2 Figure 4 depicts the battery cell both prior to packaging and as packaged.
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Figure 9(b) shows a battery lead 4' between conventional lead-insulating
films 6 '. Spec. ,r 41. Figure 9(b) additionally shows laminated sheet 1 O'
(including base layer 11 ', aluminum barrier layer 12', and heat-sealable layer
14') which forms part of the package 5. As shown, aluminum layer 12' is in
contact with battery lead 4' so as to cause a short-circuit.
The application indicates that such problem can be avoided where the
lead-insulating films 6 include a heat-resistant base film. Spec. ,r,r 17, 69.
Claim 1 is reproduced below with certain text bolded for emphasis:
1. A battery, comprising:
a battery module;
a battery package for holding the battery module; and
leads extending from the battery module and projecting
outwardly from the battery package;
wherein:
the battery package is formed from a laminated sheet;
a peripheral part of the battery package is heat-sealed;
lead-insulating films are interposed between the
peripheral part of the package and the leads;
each of the lead-insulating films comprises a heat-
resistant base film, a first resin layer formed on a first surface of
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Application 11/303,908
the heat-resistant base film through a first anchor coating, a
second resin layer formed on a second surface of the heat-
resistant base film opposite from the first surface through a
second anchor coating, each of the first and second resin
layers being formed on the heat-resistant base film by an
extrusion lamination process; and
the heat-resistant base film is formed of a
polyethylene naphthalate resin.
Appeal Br. (Claims App. A-1) (emphasis added).
REJECTION
The Examiner maintains the following rejection:
1. Claims 1-15 are rejected under 35 U.S.C. § 103(a) as obvious over
Tanaka et al. 3 in view of Yamashita et al. 4 Final Act. 2-3.
DISCUSSION
The Examiner rejected claims 1-15 as obvious over Tanaka in view of
Yamashita. Id. at 2-3. In support of the rejection, the Examiner found that
Tanaka teaches a three-layer laminate material that covers both surfaces of a
metal battery lead. Id. at 2. The laminate of Tanaka includes a heat-resistant
layer 2 and a surface material 1 as shown below:
.2
,._,_/
.. ---3
3 JP02000208112A, published July 28, 2000 ("Tanaka"), as translated.
4 US 6,761,994 B2, issued July 13, 2004 ("Yamashita").
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Tanaka, Fig. 1. Figure 1 of Tanaka shows surface material 1 on the upper
and lower surfaces of heat resistant resin film 2 as well as metal terminal
(lead) 3. Tanaka, Abstract. Tanaka states that
[ t ]he intermediate film 2 of the battery terminal covering
material is never melted even by heat seal and can be perfectly
prevented from being short-circuited with the aluminum foil of
a packaging material even by heating or pressurization .... As
the heat resisting resin film 2, polyester resin or polyamide is
used.
Id. ( emphasis added). Similarly, Tanaka teaches one may use a polyester
resin as the heat-resistant resin film. Id. ,r 15.
The Examiner found that Tanaka teaches that "it is preferred to
pretreat the heat resistant resin film prior to lamination (anchor coatings)."
Final Act. 3. The Examiner further found that "[ t ]he pretreatment may be an
electro-discharge treatment, titanium ( organic titanium compound) or a
silicon coupling agent (silane compound)." Id. ( citing Tanaka ,r 16).
The Examiner found that Tanaka does not explicitly teach that the
heat-resistant layer is a polyethylene naphthalate resin. Id. The Examiner
additionally found, however, that Tanaka teaches the heat-resistant layer
may be a polyester resin and that polyethylene naphthalate is such a
polyester resin. Id. Further, the Examiner found that the secondary
reference, Yamashita, teaches a battery packaging material that may include
polyethylene naphthalate resin as a base layer. Id. ( citing Yamashita 9:9--
13). The Examiner determined that "Yamashita teaches polyester resins
such as PET and PEN are known for use in battery packaging thus providing
motivation to use PEN as the heat resistant polyester resin disclosed by
Tanaka." Answer 4.
Appellants allege error on several bases.
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Anchor Coatings
First, Appellants argue that the references do not teach the claimed
first and second anchor coatings. Appeal Br. 8-9. Claim 1 requires "a first
resin layer formed on a first surface of the heat-resistant base film through a
first anchor coating, a second resin layer formed on a second surface of the
heat-resistant base film opposite from the first surface through a second
anchor coating." Appeal Br. (Claims App. A-1 ). Claim 5 includes similar
limitations. Id. at A-2.
Anchor coatings are shown in the figures as follows:
Fig. 1 (b) shows "a heat-resistant base film 22, a polyolefin resin layer 21 ...
with an anchor coat 24 interposed between the heat-resistant base film 22
and the polyolefin resin layer 21, and an acid-modified polyolefin resin layer
23 formed on the other surface of the heat-resistant base film 22 with
another anchor coat 24 interposed between the heat-resistant base film 22
and the acid-modified polyolefin resin layer 23." Spec. ,r 55.
The Examiner pointed to Tanaka's teaching that "[p]rior to the
lamination, preferably the discharge treatment before processing, such as
titanium or silicon coupling agent by a heat-resistant resin film" (Tanaka
,r 165), and found that the silicon coupling agents of Tanaka are anchor
coatings within the scope of claims 1 and 5. Final Act. 3. This is supported
by dependent claim 8 which provides that the anchor coating may be "a
5 Appellants appear to cite to a slightly different translation. Appeal Br. 8.
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silane compound." See Answer 4 ("the silicon coupling agent disclosed by
Tanaka is a silane compound").
Appellants argue that "although Tanaka discloses electrodischarge
treatment, Tanaka does not disclose or suggest first and second anchor
coatings, as claimed in claims 1 and 5, and does not disclose or suggest the
specific first and second anchor coatings formed by primer coating the
respective surfaces of the heat-resistant base film, as claimed in claims 8 and
9." Appeal Br. 8 (emphasis in original).
This is insufficient to rebut the Examiner's findings. The Examiner
found that Tanaka teaches application of a silicon coupling agent prior to
lamination and that such coupling agent forms a coating. See Answer 5-6
("The silicon coupling agent applied to the heat resistant layer during the
pretreatment is clearly an anchor coating."). Such finding is supported by
evidence of record. A mere denial is inadequate to rebut such findings.
Polyethylene Naphtha/ate (PEN) Base Film
For their second argument, Appellants contend that the cited
references would not have taught one of ordinary skill in the art to use
polyethylene naphthalate (PEN) as a heat-resistant base film in a lead-
insulating film. Appeal Br. 9-17.
Appellants concede that Tanaka teaches that the heat-resistant base
layer may be a polyester film and that PEN is a polyester. Id. at 9-10.
Appellants argue, however, that polyesters are a broad category and that
some polyesters would not be suitable for the heat-resistant base layer. Id. at
10. Appellants additionally point out differences in melting point, glass
transition temperature, and water vapor permeability between PEN and
another polyester, polyethylene terephthalate (PET). Id. at 10-11.
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Appellants further refer to the Mochizuki Declaration which presents data
comparing the moisture permeability and heat shrinkage of PEN and PET.
Id. at 11.
Appellants conclude that "to the extent Applicants have shown PEN is
superior to PET, when at best PET and PEN would be expected to be
equivalent if not PET being superior to PEN, it would be clear error to
ignore such evidence in determining obviousness." Appeal Br. 13. Such
evidence has not been shown to be in the prior art. Accordingly, later-
created evidence of unexpected results is not persuasive of error with regard
to the prima facie case. Such evidence may be relevant to criticality but
does not show error in the Examiner's prima face case of obviousness.
Appellants further argue that Yamashita does not overcome the
deficiencies of Tanaka. Id. at 16-17. Yamashita is cited for its teaching of a
PEN base film. Final Act. 3. Appellants point out that such film was taught
to be used in the battery packaging rather than in the lead-insulating film.
Id. at 16. Appellants argue that neither reference teaches that both PET and
PEN are interchangeable in the context of lead-insulating films. Appeal Br.
16-17. Appellants additionally assert that Yamashita does not teach the
anchor coatings of claims 1 and 5 (and dependent claims). Id. at 17.
A patent may not obtained where the differences between the claimed
invention and the prior art are such that the claimed invention would have
been obvious to a person having ordinary skill in the art. 35 U.S.C.
§ 103(a). Determining obviousness requires considering whether two or
more pieces of prior art could be combined, or a single piece of prior art
could be modified, to produce the claimed invention. Comaper Corp. v.
Antee, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). A "motivation to
combine may be found explicitly or implicitly in ... the 'interrelated
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teachings of multiple patents'; 'any need or problem known in the field of
endeavor at the time of invention and addressed by the patent'; and the
background knowledge, creativity, and common sense of the person of
ordinary skill." Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed.
Cir. 2013).
Here, Tanaka teaches a lead-insulating film including a heat-resistant
layer (film) where "[a]s the heat resisting resin film 2, polyester resin or
polyamide is used." Tanaka, Abstract; see also ,r 15. PEN is a polyester.
Final Act. 3. Further, Yamashita teaches that PEN is a polyester suitable for
use in battery packages ( although it does not teach to use PEN as a lead-
insulating film). Yamashita, 9:9-16. Yamashita also teaches that heat
resistance and electrolyte resistance are desirable characteristics for the base
layer (which may be PEN or other polyester or nylon resins). Yamashita,
9:38-39. Taken together, it is reasonable to determine that the references
provide a teaching to one of ordinary skill in the art to use PEN as the heat-
resistant layer of a lead-insulating film. Appellants have not shown error in
such determination.
Unexpected Results
Appellants additionally argue that, even if the Examiner has
established a prima facie case of obviousness, such case is rebutted by
evidence found in the Mochizuki Declaration. Appeal Br. 13-16. Evidence
rebutting a prima face case of obviousness can include evidence of
unexpected results. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed.
Cir. 2007). Establishing unexpected results requires providing a side-by-
side comparison of the claimed invention with the closest prior art which is
commensurate in scope with the claims, and showing that the result would
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have been unexpected by one of ordinary skill in the art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). The burden rests with Appellants to
establish that the comparison is to the disclosure of the closest prior art. See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Here, Appellants present evidence comparing a laminate including a
PEN heat-resistant layer (as claimed) to a laminate having a PET heat-
resistant layer. Appeal Br. 14--16 (citing Mochizuki Declaration).
Appellants assert that a PET laminate is the closest prior art as it "is the
preferred polyester resin in Tanaka and presumably in Yamashita as well."
Appeal Br. 14. In support, Appellants cite to Yamashita 9:29--57 and
Tanaka ,r 15. Id. at 11.
The Examiner, however, determined that "while Tanaka discloses
PET as a specific heat resistant polyester resin it is improper to conclude that
Tanaka prefers PET over PEN." Answer 8. The Examiner additionally took
issue with Appellants' assertion that Yamashita teaches PET resin as the
preferred resin. Id. In this regard, the Examiner stated that the "Examiner
disagrees and it is unclear how Applicant reaches the conclusion PET
'would appear' to be the preferable polyester resin in Yamashita." Id.
In the present case, the primary reference, Tanaka, is closer to the
claimed invention than the secondary reference, Yamashita. See In re
Merchant, 197 USPQ 785, 788 (CCPA 1978) ("A comparison of the claimed
invention with the disclosure of each cited reference to determine the
number of claim limitations in common with each reference ... will usually
yield the closest single prior art reference."). Tanaka teaches that "[a]s the
heat resisting resin film 2, polyester resin or polyamide is used." Tanaka,
Abstract. Tanaka further teaches as follows:
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A polyester resin such as polybutylene terephthalate, polyamide
6-6 nylon or the like, or a modified [ ... ] , polyimide, [ ... ] ,
polyether, [ ... ], aromatic polyamide (aramid) and said special
engineering plastic such as heat-resistant resin film can be used
in, cost, workability, and easiness of PET and available in the
performance of the polyamide film is desirable.
Id. 15 (ellipses in original). Thus, there is no clear teaching that PET is the
preferred embodiment. Tanaka does, however, teach that PET is one
polyester that may be used to form the heat-resistant layer. Tanaka ,r,r 22,
23, 25. Further, the Examiner has found that PET and PEN are two common
polyesters. Answer 4. Accordingly, a laminate including PET as the heat-
resistant layer (as taught by Tanaka) is an appropriate comparison.
The Mochizuki Declaration provides test results indicating that a
PEN-based laminate exhibited reduced moisture permeability and reduced
heat shrinkage relative to a similar PET-based laminate. Mochizuki Deel.
,r 8. The Declaration further provides that "[t]he above-described results
were unexpected, in that it would not have been expected that such reduced
moisture permeability and reduced heat shrinkage could be obtained by
using PEN in place of PET." Id.
The Examiner argues that the Mochizuki Declaration should be given
little weight because the rejection is based on both Tanaka and Yamashita
yet the Declaration does not take the teachings of Yamashita into account.
Answer 7-8. The combination of Tanaka and Yamashita, however, is not
the closest prior art. See In re Chapman, 357 F.2d 418,422 (CCPA 1966)
(providing that requiring the applicant to compare the claimed invention
with the combination of references relied upon in the rejection "would be
requiring comparison of the results of the invention with the results of the
invention.")
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Accordingly, we determine that Appellants have presented sufficient
evidence that a lead-insulating film employing PEN resin as a heat-resistant
layer yields unexpected results relative to the closest prior art. In view of the
foregoing, we determine that Appellants have produced evidence sufficient
to rebut the prima facie case of obviousness.
Claims 10 and 11
Appellants additionally argue that claims 10 and 11 have not been
shown to be obvious. Appeal Br. 18. Claims 10 and 11 are dependent
claims which each require that "the first anchor coating and the second
anchor coating are formed by primer coating the respective surfaces of the
heat resistant base film using an imine compound, a polyethylene imine
compound, or an isocyanate compound." Appeal Br. (Claims App. A-3).
The Examiner did not address claims 10 and 11 in the Final Rejection.
In the Answer, the Examiner determined as follows:
Tanaka teaches the surface of the heat resistant layer 2 may be
pretreated to help couple or anchor the surface material 1 to the
heat resistant layer 2. Tanaka teaches a silicon coupling agent
may be used as the pretreatment material. Applicant has not
shown any criticality to using the anchor coating materials of
claims 10 and 11. One of skill would have found claims 10 and
11 obvious in view of the teaching by Tanaka that a silicon
coupling agent may be used to pretreat the surface of the heat
resistant layer 2 to couple the heat resistant layer 2 to the
surface material 1.
Answer 4--5, 11.
An Examiner must produce evidence sufficient to support a ruling of
obviousness in order to establish a prima facie case of unpatentability under
35 U.S.C. § 103(a). Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010)
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(precedential). Tanaka's teaching that a silicon coupling agent may be used
as an anchor coating, of itself, is simply inadequate to establish a prima facie
case of the obviousness of other coatings that have not been shown to be
related in structure or function.
CONCLUSION
The rejection of claims 1-15 as obvious over Tanaka in view of
Yamashita is reversed.
REVERSED
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