14771940 - (D) (P.T.A.B. Nov. 15, 2019)

Seung Jae Hwang

Patent Trials and Appeals BoardNov 15, 2019

14771940 - (D) (P.T.A.B. Nov. 15, 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. 14/771,940 09/01/2015 Seung Jae HWANG JLE0130US 7540 23413 7590 11/15/2019 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER HANDVILLE, BRIAN ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 11/15/2019 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SEUNG JAE HWANG ____________ Appeal 2018-008158 Application 14/771,940 Technology Center 1700 ____________ Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1–5 and 7–11.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Amogreentech Co., Ltd. is identified as the real party in interest. Appeal Brief, filed January 26, 2018 (“Appeal Br.”) 3. 2 Final Office Action, dated November 15, 2017 (“Final Act.”). 3 Appellant requests “[r]ejoinder of Claims 12-14.” Appeal Br. 13. Claims 12–14 are not before us in this Appeal because they are not the subject of the Examiner’s decision from which this Appeal is taken. 37 C.F.R. § 41.31(a)(1). Appeal 2018-008158 Application 14/771,940 2 STATEMENT OF THE CASE Background The subject matter on appeal relates to “a slim type insulator” having an insulator core “provided with a plurality of fine pores of a three- dimensional structure capable of trapping air.” Specification, filed September 1, 2015 (“Spec.”) 1:10–13. According to the Specification, a core member comprises “a multi-layered laminate of nanowebs made of nanofibers . . . obtained by electrospinning a polymer material with a low thermal conductivity.” Id. at 1:13–15. Of the appealed claims, claim 1 is the sole independent claim. Claim 1 is representative of the subject matter on appeal, and reproduced below: 1. An insulator core having a three-dimensional fine-pore structure, comprising: two or more porous nanoweb layers, wherein each of the two or more porous nanoweb layers is formed of nanofibers having a diameter of less than 3 μm so as to form fine pores where air is trapped, and the nanofibers are made of a polymer having a low thermal conductivity. Appeal Br. 15 (Claims Appendix). The Examiner maintains the following rejections over the following references on appeal. Ans. 3–9; Final Act. 2–8. The References Name Reference Date Field US 2005/0025952 A1 Feb. 3, 2005 Shaffer US 2005/0272338 A1 Dec. 8, 2005 Lee US 2013/0078527 A1 Mar. 28, 2013 Masahito JP 2004162914 A June 10, 2004 Appeal 2018-008158 Application 14/771,940 3 The Rejections Claim(s) 35 U.S.C. § Reference(s) 1, 2, 4, 5, 7–10 103(a) Masahito, Lee 3 103(a) Masahito, Lee, Shaffer 11 103(a) Masahito, Lee, Field OPINION After considering the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded the Examiner erred harmfully. Appellant argues the rejection of claim 1 and points out that claims 2– 5 and 7–11 depend from claim 1. Appeal Br. 9. Accordingly, and based upon the lack of arguments directed to the subsidiary rejections, claims 2–5 and 7–11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Appellant asserts that the Examiner erred harmfully in combining the teachings of Masahito and Lee because Lee is non-analogous art. Appeal Br. 10. Appellant contends that Lee is non-analogous art because it is not in the same field of endeavor. Id. at 11. Appellant asserts that Lee is directed to a battery separator with pores for shut-down of current flow rather than an insulator core that enhances thermal insulation using a nanoweb having fine pores to trap air, thus creating an air pocket. Id. Appellant also contends that Lee is not directed to and does not address any heat-insulating problems and, therefore, is not reasonably pertinent to the particular problem addressed by the inventor. Id. at 12. According to Appellant, Lee discloses thermal stability of the battery and not thermal stability of the battery separator itself. Id. at 11. Appellant argues that because Lee’s separator is designed to be melt-down or collapsed above a predetermined temperature, it cannot be Appeal 2018-008158 Application 14/771,940 4 used as an insulator core because thermal stability is ensured by Lee’s shut- down function. Id. at 12. In response to Appellant’s arguments, the Examiner finds that Lee is in the same field of endeavor because Appellant’s claims are directed to a general insulator core and Lee discloses a core layer between a cathode and an anode within a battery that thermally insulates. Ans. 10 (citing Lee Abstract, ¶ 3). The Examiner finds that Lee teaches or suggests the battery separator provides heat resistance (or thermal insulation) between the cathode and anode of the battery. Id. at 11. The Examiner finds that Lee’s porous nanoweb provides a dual function of facilitating a battery shutdown mechanism as well as providing heat resistance. Id. (citing Lee Abstract, ¶ 20); see id. at 12 (“Lee teaches (abstract) the porous nanoweb includes first and second nanofilaments, which facilitates to perform heat resistance simultaneously with a shutdown function.”). The Examiner also finds that Lee’s discussion of the battery’s thermal stability does not suggest that Lee’s battery separator does not provide thermal insulation. Id. at 11 (citing Lee ¶ 4). The preponderance of the evidence cited in this Appeal record supports the Examiner’s rejection of claim 1. Appellant does not dispute the Examiner’s finding (Ans. 11) that Lee’s separator functions to provide heat resistance. The record supports the Examiner’s finding. Lee Abstract, ¶ 13. Appellant also does not dispute the Examiner’s finding (Ans. 11) that heat resistance is thermal insulation. Therefore, even if Lee is not in the same field of endeavor as Masahito or Appellant’s insulation material, Lee discloses a material that provides heat resistance. Therefore, even if Lee is not in the same field of endeavor as Masahito or Appellant’s insulation Appeal 2018-008158 Application 14/771,940 5 material, Lee discloses a material that provides thermal insulation, therefore it is reasonably pertinent to the problem with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Moreover, because claim 1 is directed generally to a structure having thermal insulation, the fact that Lee’s material provides heat resistance as well as a shutdown function in a battery separator application does not render it non-analogous art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject matter of a . . . claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is . . . [unpatentable] under § 103.”); In re Talkowski, Appeal No. 2012-002290, at 15 (PTAB May 24, 2013) (Informative) (“§ 103 obviousness considerations have not been restricted to an analysis based solely from an inventor’s point of view. Rather, § 103 analysis focuses on what is claimed apart from the motivation of the inventor.”) (citing In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc)). Accordingly, for these reasons and those the Examiner provides, we affirm the Examiner’s rejection of claims 1–5 and 7–11 under § 103(a) over the cited prior art references. CONCLUSION The Examiner’s rejections of claims 1–5 and 7–11 under 35 U.S.C. § 103(a) is affirmed. Appeal 2018-008158 Application 14/771,940 6 In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 2, 4, 5, 7–10 103(a) Masahito, Lee 1, 2, 4, 5, 7–10 3 103(a) Masahito, Lee, Shaffer 3 11 103(a) Masahito, Lee, Field 11 Outcome 1–5, 7–11 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