Ji Won Park et al.

Patent Trials and Appeals Board

Sep 4, 2019

14229327 - (D) (P.T.A.B. Sep. 4, 2019)

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.
14/229,327 03/28/2014 Ji Won PARK 53184-517C01US 4206
100807 7590 09/04/2019
Mintz Levin/Special Group
One Financial Center
Boston, MA 02111
EXAMINER
DIGNAN, MICHAEL L
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JI WON PARK, SEUNG JAE YOU, and HYANG MOK LEE
____________

Appeal 2018-004440
Application 14/229,327
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 3, 5, and 9–19 under 35 U.S.C. § 103 as
unpatentable over Satou3 in view of Uemura,4 and claims 16 and 17 adding
Sakashita.5 We have jurisdiction over the appeal under 35 U.S.C. § 6(b)(1).

1 Heard August 23, 2019. The Official Transcript will be made of record in
due course.
2 Appellant is the Applicant, LG CHEM, Ltd., which is identified in the
Appeal Brief as the real party in interest (Appeal Br. 1).
3 Satou et al., JP 2002-151159A, published May 24, 2002 (“Satou”). The
Examiner relies, without objection, on an English-language machine
translation of Satou. Ans. 3.
4 Uemura, US 2013/0260207 A1, published October 3, 2013 (“Uemura”).
5 Sakashita et al., US 2012/0308878 A1, published December 6, 2012
(“Sakashita”).
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Application 14/229,327

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We REVERSE.6

STATEMENT OF THE CASE
The invention relates to an electrode assembly including at least one
radical cell having a four-layered structure obtained by stacking a first
electrode, a first separator, a second electrode, and a second separator one by
one, wherein the electrodes and separators may be attached to each other via
an adhesive coating material such that both sides of the first separator facing
the first and second electrodes are coated and one side of the second
separator facing the second electrode is coated. Spec. ¶¶ 18, 19, 23. An
electrode assembly may be obtained by stacking at least two radical cells.
Id. ¶ 24.
Sole independent claim 1, reproduced below from the Claims
Appendix to the Appeal Brief, is illustrative of the subject matter on appeal.
The limitations at issue are italicized.
1. An electrode assembly comprising at least two radical units,
each radical unit having a four-layered structure obtained by
stacking a first electrode, a first separator, a second electrode,
and a second separator one by one,
wherein the radical unit is formed by attaching the first
electrode, the first separator, the second electrode, and the
second separator,
wherein the first and second separators are coated with a
coating material having adhesiveness, and
wherein both sides of the first separator facing the first
electrode and the second electrode are coated with the coating
material such that the coated sides of the first separator face
the first electrode and the second electrode, and only one side

6 Our Decision refers to the Specification (“Spec.”) filed March 28, 2014,
Appellant’s Appeal Brief (“Appeal Br.”) filed January 12, 2018, the
Examiner’s Answer (“Ans.”) dated February 22, 2018, and Appellant’s
Reply Brief (“Reply Br.”) filed March 22, 2018.
Appeal 2018-004440
Application 14/229,327

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of the second separator facing the second electrode is coated
with the coating material.

ANALYSIS
The Examiner finds that Satou teaches a stacked electrode assembly
having a plurality of radical units substantially as recited in claim 1, except
for a teaching that the first separators (or alternating separators) have a
coating on both sides and the second separators (interspersed between the
first separators) have a coating on only one side thereof facing the second
electrodes. Ans. 3–4. The Examiner finds that Uemura teaches applying a
protective film to one or both sides of separator. Id. at 4. The Examiner
concludes that it would have been obvious to use the coating on adhering
surface of the separators in Satou’s radical units to adhere the units together
in order to improve the battery’s safety. Id.
Appellant argues that neither Satou nor Uemura teaches or suggests a
stacked electrode assembly having at least two radical units in which both
surfaces of each first separators are coated while only the surface of each
second separator facing the second electrode is coated. Appeal Br. 4–5.
Appellant contends that, although Uemura teaches that one or both surfaces
of a separator may be coated with a protective film, Uemura fails to indicate
in which particular situations one or both surfaces of the separators are to be
coated. Id. at 4. Appellant contends that, starting with Satou’s stacked
electrode assembly and absent Appellant’s disclosure, the ordinary artisan
would not be taught that the separators in the stack include ones with both
sides coated and ones with only one side coated. Id. at 5.
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Application 14/229,327

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The Examiner responds that, despite the lack of a teaching in Uemura,
there are only a few possibilities for applying Uemura’s teaching to Satou’s
separators including providing coating on both sides of each separator,
providing coating on only one side of each separator, and providing coating
on an internal side of the first separator and to the external side of the second
separator. Ans. 10. The Examiner reasons that “[o]nce the decision has
been made to coat the separator, there are only a limited number of finite
options,” and it would have been obvious to try any of these possibilities,
with a reasonable expectation of success. Id., citing KSR Int’l C. v. Teleflex
Inc., 550 U.S. 398 (2007). The Examiner further finds that Satou’s teaching
of separately forming a radical unit stack via a lamination and subsequent
stacking process would not have led the ordinary artisan to coat an external
face of the separator during hot-pressing as such the coating would likely
stick to the press. Id. In addition, the Examiner finds that consideration of
the handling and storage of the radical units prior to stacking would have led
the ordinary artisan to leave the external separator face without a coating.
Id. at 11.
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421(citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)). Obviousness under § 103 must be based on
evidence in the prior art, and a proper rejection must explain how that
evidence would have taught, suggested, or motivated the modifications
necessary to overcome the differences between the prior art and the claimed
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Application 14/229,327

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invention. To proceed without adequate evidence and explanation is to fall
into the trap of prohibited hindsight.
Here, the Examiner fails to establish that the third alleged possibility,
which happens to correspond to the claimed invention, was an identified,
predictable solution, taught or suggested in the prior art. Although the
Examiner attempts to reason why the ordinary artisan would have selected
this option from the teachings of Satou and Uemura, the Examiner fails to
direct our attention to support in these teachings that would have led to the
claimed invention. Without deciding whether it would have been obvious to
avoid placing a coating on the external face of an external separator facing a
press as the Examiner concludes, we note this fact alone does not support
coating only one surface of every second separator, where those separators
are internal to the stack.
Moreover, the Examiner fails to point to any support in the prior art
for the finding that consideration of the handling and storage of the radical
units prior to stacking would have led the ordinary artisan to leave the
external separator face without a coating. Indeed, this finding is one reason
Appellant discloses for the claimed invention. Therefore, it is only with
such impermissible hindsight finding and reasoning is the ordinary artisan
led to the claimed invention. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir.
1998) (“hindsight” is inferred when the specific understanding or principle
within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at Appellant’s claimed
invention has not been explained). “[W]e cannot allow hindsight bias to be
the thread that stitches together prior art patches into something that is the
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Application 14/229,327

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claimed invention.” Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d
1358, 1367 (Fed. Cir. 2017).
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a prima facie case of obviousness of the Appellant’s claimed
invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”). The Examiner does not rely on Sakashita to remedy the
deficiencies in the combination of Satou and Uemura discussed above.
Accordingly, we reverse the rejections.7

DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 3, 5, and 9–19 is reversed.

REVERSED

7 Because we are persuaded that the Examiner failed to carry the burden of
presenting a prima facie case of obviousness, we need not address
Appellant’s arguments and evidence of unexpected results.