Lee, Joo-Sung et al.

Patent Trials and Appeals Board

Oct 29, 2019

14103179 - (D) (P.T.A.B. Oct. 29, 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.
14/103,179 12/11/2013 Joo-Sung Lee LGCHEM 3.9-165
CON CON
2405
86765 7590 10/29/2019
LGCHEM
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
600 South Avenue West
Westfield, NJ 07090
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
10/29/2019 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOO-SUNG LEE, JANG-HYUK HONG,
and JONG-HUN KIM

Appeal 2018-007056
Application 14/103,179
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 15–18. We have jurisdiction
under 35 U.S.C. § 6(b). Appellant presented oral arguments in this appeal
on October 1, 2019.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as LG CHEM,
LTD. Appeal Br. 2.
Appeal 2018-007056
Application 14/103,179

2

Appellant’s invention is directed to a battery separator for a lithium
secondary battery wherein the separator has an organic-inorganic composite
porous coating layer made from a mixture of a binder polymer and inorganic
particles formed on at least one surface of a porous substrate (Spec. ¶ 2;
claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A separator, comprising: a porous substrate;
an organic-inorganic composite inner layer disposed on at least one
surface of the porous substrate, and comprising a first binder polymer and
inorganic particles; and
a porous polymer outer layer disposed on a surface of the organic-
inorganic composite inner layer, and consisting of a second binder polymer,
wherein a loading amount of the second binder polymer in the porous
polymer outer layer ranges from 0.1 to 3.0 g/m2 for porosity and bondability
of the separator,
wherein the organic-inorganic composite inner layer has pores or
interstitial volumes formed between the inorganic particles.

Appellant appeals the Examiner’s rejections:
1. Claims 1–6, 8, 10, and 15–18 are rejected under 35 U.S.C §103
over Katayama (US 8,822,082 B2; issued Sept. 2, 2014).
2. Claim 7 and 9 are rejected under 35 U.S.C. §103 over
Katayama in view of Lee (US 2008/0311479 A1; published
Dec. 18, 2008).
Claims 7 and 9 under the Examiner’s rejection over Katayama in view of
Lee will stand or fall with our analysis of the rejection over claim 1 over
Katayama.
Appeal 2018-007056
Application 14/103,179

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ANALYSIS
The Examiner’s findings and conclusions regarding Katayama are
located on pages 3 to 5 of the Final Action. The Examiner finds that
Katayama does not teach the loading amount of the second binder polymer
in the porous polymer outer layer ranges from 0.1 to 3.0 g/m2 (Final Act. 3).
The Examiner find that Katayama teaches that amount of resin A and/or
resin B in the first separator layer can be varied since the amount of filler in
the first separator layer may be adjusted in order to maintain shutdown
characteristics (Final Act. 3–4). The Examiner finds that Katayama teaches
that the total volume of resin A and resin B in all of the constituent
components of the separator is 80 vol.% or less for securing shape stability
of the separator at high temperatures (Final Act. 4). The Examiner
concludes that it would have been obvious that the amount of resin A and/or
resin B in the outer layer (i.e., the second separator layer) can be adjusted for
a certain amount of the total amount (80 vol.% or less) of the resin A and B
in the separator (Final Act. 4). The Examiner finds that the amounts of resin
A and/or resin B are result-effective variables that can be optimized (Final
Act. 4). The Examiner further concludes that it would have been obvious to
have optimized the loading amount of the second binder polymer in the
porous polymer outer layer to achieve various amounts including the
claimed amount of 0.1 to 3.0 g/m2 in order to maintain shutdown
characteristics and secure shape stability of the separator at high
temperatures (Final Act. 4). Alternatively, the Examiner finds that changes
in proportions, such as the claimed loading amount, do not patentably
distinguish the invention in the absence of criticality of the claimed loading
amount range (Final Act. 4–5).
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Application 14/103,179

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Appellant argues that the phrase “loading amount” in the claim means
the weight of the second binder polymer in the outer layer relative to the unit
area of the porous polymer outer layer (App. Br. 6). Appellant contends that
the porous polymer outer layer includes a unit area of the second binder
polymer and a unit area of the pores that compose the porous polymer outer
layer (App. Br. 6). Appellant argues that the first variable (i.e., the volume
of resin A and/or resin B with respect to the pore volume) and the second
variable (i.e., the volume of resin A and/or resin B relative to the total
volume of constituent components) in Katayama do not include such a
loading amount (App. Br. 6). Appellant contends that even if the volume
amount of resin A and/or resin B were converted to mass, the amount of the
first variable would be relative to the pore volume, not the unit area of the
porous polymer outer layer (App. Br. 6). Appellant argues that optimizing
Katayama’s volumes of resin A and/or resin B for shape stability and
shutdown characteristics would not have led to the claimed loading amount
that controls porosity and bondability of the separator (App. Br. 10).
The preponderance of the evidence favors Appellant’s argument of
non-obviousness. The Examiner has not established that optimizing the
volume amount of resin A and/or resin B to achieve shutdown characteristics
and shape stability would have resulted in a loading amount of 0.1 to 3.0
g/m2 of the second binder polymer in the porous polymer outer layer.
Appellant and the Examiner agree that the loading amount is a measure of
the weight per unit area of the surface of the outer polymer layer (Ans. 7;
Reply Br. 3). Although the Examiner finds that Katayama’s examples
disclose the specific gravity of polyethylene is 1.0 g/m3 and the thickness of
the polyethylene layer, the Examiner’s calculation based on multiplying the
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Application 14/103,179

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specific gravity by the layer thickness does not account for the surface area
of the layer that includes the area of the pores (Ans. 9). In other words, the
Examiner has not established what the loading amount would be for the
layer based on the actual surface area of the layer which includes pores.
Because Katayama controls the volume of resin A and resin B in the
separator layers for a different purpose (i.e., shutdown characteristics and
shape stability), it is speculative to determine that one of ordinary skill in the
art would have arrived at the claimed loading amount which is used to
control porosity and bondability of the separator. The Examiner has not
shown that optimizing the resin A and resin B volumes in the separator
layers to control shutdown characteristics and shape stability would have
resulted in a loading amount as recited in the claims.
The Examiner’s alternative basis for concluding obviousness is based
on change in proportions (i.e., loading amount) or amounts is faulty because
there is no indication that the claimed loading amount of the polymer in the
porous polymer outer layer would have been suggested by Katayama (Final
Act. 4–5). Specifically, we agree with Appellant that the loading amount
(i.e., weight per unit area) is not taught by Katayama as a variable that can
controlled to affect porosity, bondability of the separator, or any particular
characteristic. Katayama teaches to control the volume of resin A or resin B
to control shape stability and shutdown characteristics of the battery
(Katayama, col. 15, ll. 21–54). Therefore, the Examiner has not shown that
one of ordinary skill in the art would have arrived at the claimed loading
amount of the second binder polymer in the porous polymer outer layer as a
mere change in proportion.
On this record, we reverse the Examiner’s § 103 rejections.
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Application 14/103,179

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 10, 15–
18
103 Katayama 1–6, 8, 10, 15–18
7, 9 103 Katayama, Lee 7, 9
Overall
Outcome
1–10, 15–18

REVERSED