Appeal No. 2004-0949
Application No. 09/528,986
reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
Here, the examiner does not explain how each and every
element recited in claim 1 is disclosed by Wakabe. In
particular, if charge-discharge lead 102 corresponds to
appellant’s claimed thin film, and if cutting device 103
corresponds to the claimed shielding member, the examiner does
not explain what component in Wakabe is the closure cap. Also,
once the thin film 102 is punctured, cutting device 103 is no
longer located between the thin film and the generator element.
Hence, the examiner has not met his burden. Id. The examiner’s
obviousness rejection fails to explain how modification of
Wakabe (regarding the above-mentioned deficiencies) would have
been obvious.
In view of the above, we therefore reverse the anticipation
and obviousness rejections of claims 1-8 over Wakabe.
II. The Obviousness Rejection over Matsushita
We refer to pages 4-5 and 7 of the answer regarding the
examiner’s position for this rejection. We observe that the
examiner states that Matsushita does not teach “a cover hole to
be covered with a thin film”. Yet, the examiner states that
“[i]t would be obvious to one skilled in the art at the time the
invention was made to include a shielding member for preventing
the liquid electrolyte of a battery from exiting the cell or
coming into contact . . .”. Answer, pages 4-5. Hence, the
examiner recognizes a deficiency found in Matsushita (a cover
hole to be covered with a thin film). Yet, the examiner does
not explain how this deficiency is made obvious; rather, the
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