Ex Parte Zhang et al

Board of Patent Appeals and Interferences

Aug 30, 2010

10836732 (B.P.A.I. Aug. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ZHENGMING ZHANG
and KHUY V. NGUYEN
__________

Appeal 2009-006754
Application 10/836,732
Technology Center 1700
___________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006754
Application 10/836,732

2
A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 2, 9, 11, 12, 14-18, and 24. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a battery separator having
anti-static properties. Spec. 1:3-4. The battery separator comprises a
microporous polyolefin film comprising a polyolefin and as much as 2% by
weight of a block copolymer including a polyetheresteramide monomer.
Polyetheresteramide provides anti-static properties. Spec. 6:17-7:1.
Claim 2, reproduced below, is illustrative.
2. A battery separator comprising:

a microporous polyolefin film;

where said microporous polyolefin film consisting of:

a polyolefin and from 0.1% by weight to 2% by weight
of a block copolymer including a polyetheresteramide
monomer;

where said polyolefin is selected from the group
consisting of: polyethylene, polypropylene, polybutylene,
polymethylpentene, mixtures thereof, and copolymers thereof;
and

where said microporous film has a pore size in the range
of 0.005 to 1.5 micron.

Br., Claims Appendix.2

2 Appeal Brief dated September 9, 2008.
Appeal 2009-006754
Application 10/836,732

3
The only Examiner’s rejection on appeal is the rejection of claims 2,
9, 11, 12, 14-18, and 24 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Wensley (US 2002/0168564, published November 14,
2002), Yamaguchi (US 2002/0160268, published October 31, 2002), and
Ueda (US 5,886,098, issued March 23, 1999).
B. ISSUE
The Examiner found, and the Appellants do not dispute, that Wensley
discloses a battery separator comprising a microporous polyolefin film
having a pore size that overlaps the claimed range. Ans. 33; Wensley, para.
[0018].
The Examiner found that Wensley does not disclose that the
polyolefin film includes 0.1% to 2% by weight of a block copolymer
including a polyetheresteramide monomer. However, the Examiner found,
and the Appellants do not dispute, that Yamaguchi is evidence that, at the
time of the Appellants’ invention, it was known to include additives such as
an antistatic agent in a battery separator. Ans. 3-4; see also Yamaguchi,
paras. [0040], [0098].
The Examiner found that Yamaguchi does not disclose the particular
antistatic agent recited in claim 2 in the claimed amount. However, the
Examiner found, and the Appellants do not dispute, that Ueda discloses a
resin composition consisting of 3% to 40% by weight of a block copolymer
including a polyetheresteramide. Ans. 4; see also Ueda 1:21-22 (disclosing
that polyetheresteramide is a known antistatic agent).
The Examiner found that the claimed range and the range disclosed in
Ueda do not overlap. However, the Examiner determined that “the ranges

3 Examiner’s Answer dated November 6, 2008.
Appeal 2009-006754
Application 10/836,732

4
are close enough that one skilled [in] the art would not expect a difference in
properties.” Ans. 7; see also Ans. 4.
The Examiner concluded that the combined teachings of Wensley,
Yamaguchi, and Ueda render obvious the claimed battery separator. Ans. 4.
The Appellants contend that that the claimed range (i.e., as much as
2% by weight of a block copolymer including a polyetheresteramide
monomer) and the range disclosed in Ueda (i.e., as little as 3% by weight)
differ by at least 50% and Ueda does not disclose or suggest that “the use of
less than 3% polyetheresteramide would be successful.” Br. 14; see also Br.
22, 31, 39.4
Based on the foregoing, the sole issue on appeal is:
Did the Examiner err in concluding that a battery separator
comprising as much as 2% by weight of a block copolymer including a
polyetheresteramide monomer would have been obvious to one of ordinary
skill in the art in view of the combined teachings of the applied prior art?
C. PRINCIPLES OF LAW
The test for obviousness is not that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to one
of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
All disclosures of the prior art must be considered. In re Lamberti, 545 F.2d
747, 750 (CCPA 1976).
In cases involving overlapping ranges, the Court has consistently held
that even a slight overlap in range establishes a prima facie case of

4 The Appellants argue that independent claims 2, 9, 17, and 24 should be
considered separately. Br. 4. However, the Appellants present substantially
the same argument for each of these claims.
Appeal 2009-006754
Application 10/836,732

5
obviousness. Likewise, the Court has held that a prima facie case of
obviousness exists “when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003); see also Titanium Metals Corp. v. Banner, 778 F.2d
775, 783 (Fed. Cir. 1985).
D. ANALYSIS
The Appellants do not provide any explanation or direct us to any
evidence demonstrating that the Examiner’s position is erroneous, i.e., that
the claimed range and the range disclosed in Ueda are so close that one
skilled in the art would not expect a difference in properties. The mere
assertion that there is a 50% difference between the claimed range and the
range disclosed in Ueda does not suffice.
Moreover, the record on appeal appears to support the Examiner’s
position. According to the Appellants’ Specification:
For overall performance the use of the block copolymer
including a polyetheresteramide is better when it is equal to or
less than 15%. Preferred are levels of blocked copolymers of
less than or equal [to] 5% by weight to the weight of the
polyolefin. More preferred [are] levels of blocked copolymers
of less than 5% by weight based on the weight of the
polyolefin.

Spec. 7:1-7; see also Spec. 7:7-10 (blocked copolymer works well at levels
of 4% or less and 3% or less by weight to the weight of the polyolefin used).
The Appellants also argue that the claimed range is “critical and
unexpected.” Br. 14; see also Br. 22, 31, 39. However, the Appellants do
not direct us to any evidence that supports this argument. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“unexpected results must be
Appeal 2009-006754
Application 10/836,732

6
established by factual evidence[; m]ere argument or conclusory statements
in the specification does not suffice”).
For the reasons set forth above and in the Examiner’s Answer dated
November 6, 2008, the § 103(a) rejection will be affirmed.
D. 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

tc

HAMMER & ASSOCIATES, P.C.
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226