جمهورية كوريا

The translation does not have any legal effect and the Judiciary of the Republic of Korea does not guarantee the accuracy of the translated text. Please refer to the original decision in Korean for an accurate statement of law.

 

 

PATENT COURT OF KOREA

FIFTH DIVISION

DECISION

 

Case No.:  2015Heo7346 Invalidation of Registration (Patent)

 

Plaintiff:  A

 

Defendant:  C

 

Closure of Hearing:  April 27, 2016

 

Date of Decision:  May 27, 2016

 

ORDER

 

1.              In the decision of the Intellectual Property Trial and Appeal Board (“IPTAB”) issued on September 30, 2015 in Case No. 2014Dang2969, the part of the decision relating to Claims 5, 6, 7, and 8 of the Korean Patent No. 1431070 is cancelled.

 

2.              The remaining requests of the Plaintiff are dismissed.

 

3.              1/2 of the trial costs shall be borne by the Plaintiff and the other 1/2 shall be borne by the Defendant.

 

PLAINTIFF’S DEMAND

 

The decision of the IPTAB issued on September 30, 2015 in Case No. 2014Dang2969 shall be cancelled.

 

OPINION

 

1.              Background Facts

 

A.             Plaintiff’s patent of the subject case (Plaintiff’s Exhibit No. 1-2)

 

1)              Title of the Invention: Redox Flow Battery Stack Provided with Ion Exchange Membrane and Flow Frame Assembly

 

2)              Filing Date/ Registration Date/ Registration No.: July 16, 2013/ August 11, 2014/ 10-1431070

 

3)              Summary of the Invention

 

A)             Technical field: The Patented Invention of the Subject Case (hereinafter, referred to as the “Subject Patent”) relates to an assembly in which an ion exchange membrane and flow frames, which are principal components of a stack for a redox[1] flow battery, are combined as one component (see Technical Field, paragraph [0001]).

 

B)             Conventional art and problems to be solved: In general, a redox flow battery consists of a stack (1) formed by stacking cells in which an electrochemical reaction occurs, a tank (3) storing an electrolyte, and a pump (4) supplying the electrolyte from the tank storing the electrolyte to the stack.  The stack (1) comprises an end plate (11)-an insulating plate (12)-a current plate (13)-a separation plate[2] (14)-a gasket (15)-a flow frame[3] (16)-an electrode (17)-a gasket (15)-an ion exchange membrane (18)-a gasket (15)-an electrode (17)-a flow frame 16-a gasket (15)-a separation plate (14)-a current plate (13)-an insulating plate (12)-an end plate (11).   A unit cell is formed from a separation plate (14) to a next separation plate (14), and generally, one stack is formed by stacking several tens to several hundreds unit cells (see paragraphs [0006] and [0007]).

 

Since the end plate (11), the insulating plate (12), the current plate (13), the flow frame (16), and the like have a certain extent of rigidity, they are easy to handle.  In contrast, the ion exchange membrane[4] (18), the gasket (15), the electrode (17), and the like are formed of a flexible material without rigidity, and thus are difficult to handle (see paragraph [0009]).  In particular, since two electrolytes react with each other in-between the ion exchange membrane (18), the gasket (15) is disposed so as to maintain a sealing between the ion exchange membrane and the flow frames (16).  When several hundred plates are pressurized so as to assemble a stack, it is quite difficult to align an ion exchange membrane formed of a flexible material without rigidity and a gasket formed of a flexible material without rigidity, with the gasket being adjacent to the ion exchange membrane (see paragraph [0010]).

 

C)             The means to solve the problems: In order to solve the aforementioned problems, in the Subject Patent, before the stack is assembled, the flow frames (16) and the ion exchange membrane (18) are preassembled to constitute a unit, and the unit is assembled to facilitate the assemble of the stack so as to reduce the time consumed to assemble a stack and solve a limitation in assembling an ion exchange membrane formed of a flexible material and a gasket adjacent to the ion exchange membrane.  In other words, by directly fixing the ion exchange membrane (18) to the flow frames (16), the gasket (15) which was previously disposed between the ion exchange membrane (18) and the flow frames (16) becomes unnecessary, thereby facilitating the assemble of the stack.  In addition, the assembly of the ion exchange membrane (18) and the flow frames (16) may be managed as a separate unit, thereby facilitating quality control and assuring a high quality stack.  Also, since the ion exchange membrane (18) is directly fixed between the flow frames (16), the ion exchange membrane (18) may be formed to be smaller, thereby reducing production costs (see paragraphs [0012], [0013], and [0020] to [0022]).

 

4)              Claims

 

Claim 1.  A redox flow battery stack assembled by stacking a plurality of plates, the redox flow battery stack comprising: an ion exchange membrane (18) and flow frames prefixed (16) to either side of the ion exchange membrane, wherein the prefixed ion exchange membrane (18) and flow frames are assembled with other plates (hereinafter, referred to as “Claim 1”, and all other claims will be referred in the same manner).

 

Claim 2.  The redox flow battery stack of claim 1, wherein a gasket (15) is not present between the flow frames (16) and the ion exchange membrane (18).

 

Claim 3.  The redox flow battery stack of claim 2, wherein the ion exchange membrane (18) is attached to outer frames (16b) of the flow frames (16) by using an adhesive or a double-sided tape.

 

Claim 4.  The redox flow battery stack of any one of claims 1 to 3, wherein an electrode (17) is disposed in an inner empty space (16a) of each of the outer frames (16b) in the flow frames (16), and the ion exchange membrane (18) is larger in size than the electrode (17).

 

Claim 5.  A method of assembling a redox flow battery stack, comprising stacking a plurality of plates, wherein before the stacking, an ion exchange membrane (18) is prefixed to flow frames (16) to be disposed at either side of the ion exchange membrane.

 

Claim 6.  The method of claim 5, wherein the prefixing is directly performed without a gasket (15) between the flow frames (16) and the ion exchange membrane (18).

 

Claim 7.  The method of claim 6, wherein the ion exchange membrane (18) is attached to outer frames (16b) of the flow frames (16) by using an adhesive or a double-sided tape.

 

Claim 8.  The method of any one of claims 5 to 7, wherein an electrode (17) is disposed in an inner empty space (16a) of each of the outer frames (16b) in the flow frames (16), and the ion exchange membrane (18) is larger in size than the electrode (17).

 

5)              Main Figures

 

[Fig. 2] An exploded perspective view of an existing redox flow battery stack.

[Fig. 4] An exploded perspective view of the flow frame and ion exchange membrane assembly according to the present invention.

B.             Prior Art

 

1)              Prior Art 1 (Plaintiff’s Exhibit No. 3)

 

A)             Main Details

 

Prior Art 1 relates to ‘a redox flow battery cell’ disclosed in Japanese Patent Application Publication No. 2005-347106 published on December 15, 2005, and is directed to a stack formed by stacking a plurality of redox flow battery cells comprising a separating membrane (1), bipolar plates (2a, 2b) to be disposed at either side of the separating membrane, electrodes (4a, 4b), and frames (3a, 3b).  The object of Prior Art 1 is to obtain a redox flow battery cell, which makes it possible to perform a sealing process with a small number of components and reduce the area of the separating membrane.  Prior Art 1 discloses that a gasket is not used between the separating membrane and the frame, the electrodes (4a, 4b) which are smaller than the separate membrane are disposed in an inner space of the frame, and an outer peripheral part (101) of the separating membrane is fastened by the frames (3a, 3b) instead of annular grooves (11a, 11b) and O rings (42a, 42b) which are conventional sealing means, to seal an electrode chamber (see paragraphs [0005], [0007], [0008], [0014], [0034], and Figs. 2, 3, and 4 ).

 

B)             Main Figures: Main figures are shown in Annex.

 

2)              Prior Art 2 (Plaintiff’s Exhibit No. 4)

 

A)             Main Details

 

Prior Art 2 relates to ‘a cell stack, cell frame, redox flow battery, and cell stack manufacturing method’ disclosed in Japanese Patent Application Publication No. 2012-99368 published on May 24, 2012, and discloses a cell stack formed by laminating cell frames (120), electrodes (104, 105), and an ion-exchange membrane (101).  Also, Prior Art 2 discloses that in the process of arranging a laminated body comprising a cell frame (120) on an end plate (210) (process B) during manufacturing of the cell stack, an arrangement of the laminated body can be carried out by stacking the cell frame, the electrodes, and the ion-exchange membrane on an end plate one by one, or by stacking a certain number of the cell frames, the electrodes, and the ion-exchange membrane first and then putting a laminated body made thereby on the end plate, repeatedly (see paragraph [0023]).

 

B)             Main Figures: Main figures are shown in Annex.

 

3)              Prior Art 3 (Plaintiff’s Exhibit No. 5)

 

A)             Main details

 

Prior Art 3 relates to ‘an electrolyte circulation type cell stack for secondary battery’ disclosed in Japanese Patent Application Publication No. 2011-222312 published on November 4, 2011, and discloses that when manufacturing a cell stack of a redox flow battery, an ultraviolet curing type resin is used as a seal member between a separating membrane and a cell frame, instead of a plate-like packing, for work efficiency (see paragraphs [0002] and [0011]).  Also, after stacking a positive electrode (3), the separating membrane (4), and the negative electrode (5) on the cell frame (2) on which the ultraviolet curing type resin was applied, another cell frame (2) on which the ultraviolet curing type resin was applied is piled up, and each cell frame (2) is pressed (see paragraph [0038]).

 

B)             Main Figures: Main figures are shown in Annex.

 

C.             Procedural history of the administrative decision

 

1)              The Defendant filed an invalidation action

 

The Defendant filed a request for invalidation action against the Plaintiff in the IPTAB Decision Case No. 2014Dang2969 on November 21, 2014 on the ground that the Subject Patent lacks novelty and inventive step over Prior Arts 1 to 3.

 

2)              Summary of the administrative decision

 

On September 30, 2015, the IPTAB rendered a decision, which accepted the Defendant’s request for the invalidation action due to lack of inventive step of the Subject Patent over Prior Art 1 to 3 for the following reasons.

 

①              The characterizing part of Claim 1 and the corresponding features of Prior Art are identical in that a stack comprises an ion exchange membrane [a separating membrane] and a flow frame [a (cell) frame].  The only difference between the characterizing part of Claim 1 and Prior Art lies in that ‘the ion exchange membrane and flow frames prefixed to either side of the ion exchange membrane are assembled with other plates’.

Such difference relates to specifying the invention of a product by describing its manufacturing method.  However, in a stack formed by stacking the ion exchange membrane and the flow frame, etc., it is difficult to see that ‘a fixed state of the ion exchange membrane and the flow frame’ is distinguished between the case in which the ion exchange membrane and the flow frame are prefixed and the case in which stacked and from when they are not.  Therefore, the characterizing part that ‘the ion exchange membrane and the flow frame are prefixed before they are assembled with other plates’ is not deemed to particularly limit the structure of the stack that is finally manufactured.  Further, even if the stack of Claim 1 has a special structure through the manufacturing method set forth in the characterizing part, the feature of ‘preassembling or prefixing some of the components to be stacked in a form of sub-assembly and thereby manufacturing a final product’ at the time of manufacturing the stack was well-known and widely used technology in the manufacturing business field.  Therefore, PHOSITA does not have any difficulty in applying said feature to Prior Art 1 to 3, and can obviously predict effects therefrom.

 

②              Claim 2 further comprises the feature that a gasket is not present.  However, PHOSITA can merely select such feature.  Further, Prior Art 1 discloses the feature that a gasket is not used.

 

③              Claim 3 further comprises the feature that ‘the ion exchange membrane is attached to outer frames of the flow frames by using an adhesive or a doublesided tape’.  However, Prior Art 3 discloses that a gap between a cell frame and a separating membrane is connected by an ultraviolet curing type resin, and the ultraviolet curing type resin corresponds to an adhesive.

 

④              Claim 4 further comprises the feature that ‘an electrode is disposed in an inner empty space of each of the outer frames in the flow frames, and the ion exchange membrane is larger in size than the electrode’.  However, drawings of Prior Art 1 disclose the feature that an electrode is disposed in an inner space of a frame, and the electrode is smaller in size than a separating membrane.

 

⑤              Claims 5 to 8 are substantially identical to Claims 1 to 4 in terms of the characterizing feature and differ only as to the category of the invention.

 

[Factual Basis] Undisputed facts, descriptions of Plaintiff’s Exhibit Nos. 1 to 5, and the purport of overall arguments.

 

2.              Whether Administrative Decision Is Improper

 

A.             Whether the administrative decision is in violation of Article 162(2)(vi) of the Patent Act

 

1)              Plaintiff’s Arguments

 

The administrative decision failed to specifically address each of the Plaintiff’s arguments regarding Claims 1 to 8 in its grounds for the decision, and thus was in violation of Article 162(2)(vi) of the Patent Act stipulating that grounds for a decision should be described in the administrative decision.  In this regard, the administrative decision is improper.    

 

2)              Judgment

 

The decision of the IPTAB shall be in writing, and shall state the grounds for the decision (including the purport and a summary of the grounds for the request) (see Article 162(2)(vi) of the Patent Act).

 

In the ground for the decision, the judgment on the party’s arguments or the particulars of the offence and defense should be described so that the order can be recognized as proper, and it is not necessary to make a judgment on all of the party’s arguments or offences and defenses.

 

Also, even if a specific or direct judgment on the party’s arguments is not indicated in the grounds for the decision, if it can be understood from the overall purport of the grounds of the decision whether the party’s arguments are accepted or denied, the decision is not considered to have omitted the judgments on the arguments.  Further, even if a judgment is not actually made, the omission is not considered improper unless it affects the result of the decision.

 

In the administrative decision, the claims were interpreted by taking into consideration that Claim 1 is an invention of a product defined by a manufacturing method.  Thereafter, it was judged that Claim 1 lacks inventive step over prior art on the grounds that it is difficult to see that ‘a fixed state of the ion exchange membrane and the flow frame’ is different between the case in which the ion exchange membrane and flow frame are prefixed and then stacked and the case in which they are not, and that the feature of ‘preassembling or prefixing some of the components to be stacked in a form of sub-assembly and thereby manufacturing a final product’ when manufacturing a stack was well-known and widely used technology in the manufacturing business field.  Also, the inventive step was denied for Claims 2 to 4 by comparing the claims and Prior Art in terms of their corresponding features.  Further, the inventive step of Claims 5 to 8 also was denied on the ground that the claims are substantially identical to Claims 1 to 4 in terms of the characterizing feature.

 

Although each and every argument of the Plaintiff was not specifically and directly addressed in the administrative decision, it can be understood that the IPTAB denied the Plaintiff’s arguments in view of the overall purport of the administrative decision.  Therefore, the administrative decision is not deemed to be in violation of the Act stipulating that the grounds for decision should be described in the administrative decision.  Thus, the Plaintiff’s arguments are without merit.

 

B.             Whether the Subject Patent has novelty and inventive step

 

1.               Parties’ arguments

 

The Plaintiff argued that the technical feature of the Subject Patent lies in that, when a redox flow battery stack is assembled, an ion exchange membrane is prefixed to flow frames to be disposed at either side of the ion exchange membrane to construct a unit and thereafter the units is assembled with other plates.  Through this technical feature, the invention solves the technical problem that an ion exchange membrane formed of a flexible material is difficult to handle when assembling stacks.  In contrast, Prior Art fails to disclose the aforementioned technical feature of the Subject Patent, and thus the Subject Patent has inventive step over Prior Art.

 

Regarding the Plaintiff’s argument, the Defendant argued that Claims 1 to 4 lack novelty and inventive step since Prior Art 1 to 3 disclose the technical features of Claims 1 to 4.  Further, Claims 5 to 8 are substantially identical to Claims 1 to 4 and differ only as to the category of the invention, and thus lack novelty and inventive step like Claims 1 to 4.

 

2)               Whether Claim 1 has novelty and inventive step

 

A)             Relevant legal principle

 

Under Article 2(3) of the Patent Act, inventions are categorized into ‘an invention of a product’, ‘an invention of a process’, and ‘an invention of a process of manufacturing a product’.  In the case of a claim that is directed to a product that is defined by a manufacturing process of the product (hereinafter, referred to as ‘product-by-process claim’), the subject matter of the invention is not the manufacturing process, but the final product itself, regardless of the description of the manufacturing method.  Therefore, a product-by-process claim comes under the type of ‘an invention of a product’.  A claim relating to an invention of a product should be described in the manner of specifying the feature of the product that is the subject matter of the invention, and thus, the manufacturing process described in the claim relating to the invention of the product is only construed as a way of specifying the structure or characteristics/property of the final product.  Accordingly, the patentability of a product-by-process claim shall be determined based solely upon the product itself, in which the structure or characteristics/property of the product is specified by claim limitations including the manufacturing process of the product, and shall not be based on its manufacturing method, and then novelty or inventive step of the product-by-process claim shall be assessed in view of prior art known before the filing of the patented invention (see Supreme Court Decision Case No. 2011Hu927 rendered on January 22, 2015, En Banc Decision).

 

B)             Correspondence among elements

 

Elements	Claim 1	Conventional art and Prior Art 1, 2, and 3
Preamble	A redox flow battery stack assembled by stacking a plurality of plates	A redox flow battery stack formed by stacking a number of plates such as an ion exchange membrane (a separating membrane), electrodes, etc. is illustrated. (see paragraph [0007] and Fig. 2 of the Specification of the Subject Patent, Figs. 1, 3, and 4 of Prior Art 1, Figs. 1 and 7 of Prior Art 2, Figs. 1, 3, 5 and 6 of Prior Art 3)
Characterizing part	The redox flow battery stack comprising: an ion exchange membrane (18); and flow frames (16) prefixed to either side of the ion exchange membrane, wherein the prefixed ion exchange membrane and flow frames are assembled with other plates.	Cell stack wherein flow frames (frames) are stacked on the either side of an ion exchange membrane (a separating membrane) (see paragraph [0007] and Fig. 2 of the Specification of the Subject Patent, paragraphs [0005], [0014] , and [0034], and Figs. 1, 3, and 4 of Prior Art 1, paragraph [0030] and Figs. 1 and 7 of Prior Art 2, paragraphs [0018] and [0039], and Figs. 1, 3, 5, and 6 of Prior Art 3)

 

C)             Similarities and Differences

 

Claim 1 and the conventional art in the Specification of the Subject Patent (hereinafter, referred to as the “conventional art”) and Prior Art 1, 2, and 3 are identical in that they pertain to a redox flow battery stack wherein flow frames (frames) are stacked on either side of an ion exchange membrane (a separating membrane).  However, there is a difference between Claim 1 and the conventional art and Prior Art 1, 2, and 3 in that claim 1 describes that an ion exchange membrane and flow frames are prefixed before stacking other elements while the conventional art and Prior Art 1, 2, and 3 fail to disclose such limitation.

 

D)             Review

 

(1)            Whether Claim 1 has inventive step

 

Claim 1 does not differ from the conventional art and Prior Art 1, 2, and 3 in terms of the stack, structure, or operation effects, and thus lacks novelty, or at least Claim 1 could have been easily invented by a person having ordinary skill in the art (hereinafter, referred to as ‘PHOSITA’) in view of Prior Art 1, 2, and 3, and thus lacks inventive step, as described below.

 

Claim 1, which is directed to a ‘redox flow battery stack’ wherein stacking is already complete, corresponds to an ‘invention of a product’.  Therefore, the element of ‘an ion exchange membrane (18) and flow frames (16) prefixed to either side of the ion exchange membrane, wherein the prefixed ion exchange membrane (18) and flow frames are assembled with other plates’, apart from whether the element per se involves inventive step as an ‘invention of a process of manufacturing a product’, is merely a factor that specifies a structure or property of the ‘redox flow battery stack’ product of Claim 1.

 

In reference to the detailed description of the Subject Patent, however, the meaning of ‘prefixed’ in Claim 1 is interpreted such that an ion exchange membrane and flow frames on either side of the ion exchange membrane are prefixed first and then are made in the form of a unit.  This only limits the timing of fixing to ‘before stacking,’ and is understood as not limiting the method or type of fixing.

 

From this point of view, the stacking by ‘prefixing an ion exchange membrane flow frame on either side of the ion exchange membrane to constitute a unit; forming a unit cell by stacking electrodes, a gasket, and a separation plate; and forming a stack by stacking such unit cells, a current plate, an insulating plate, etc.’ as set forth in Claim 1 and the stacking by ‘forming a stack by stacking an ion exchange membrane and flow frames without constructing a unit and other elements such as an end plate, an insulating film, a current plate, a separating membrane, a gasket, electrodes, etc., in order’ as disclosed in the conventional art and Prior Art 1, 2, and 3 both result in a stack with the flow frames somehow fixed to either side of the ion exchange membrane.  As such, Claim 1 and the conventional art and Prior Art 1, 2, and 3 differ only with respect to the order of stacking or fixing, and there is no difference with respect to the structure or operation effects of the completed stack.

 

(2)            Judgment on the Plaintiff’s Arguments

 

(A)           The Plaintiff argues that, since an ion exchange membrane and flow frames on either side of the same are prefixed, there is no need to install an existing ‘gasket’, which was installed between the ion exchange membrane and the flow frames on either side of the ion exchange membrane.  Thus, there is a structural difference.

 

However, Claim 1 does not have the limitation of not inserting a ‘gasket’, and this limitation is only added in Claim 2, which is a dependent upon Claim 1.  Taking the foregoing into account, it is reasonable to consider Claim 1 as including the case in which the ion exchange membrane and the flow frames on either side of the ion exchange membrane are fixed as the gasket is inserted therebetween.  Accordingly, the Plaintiff’s argument cannot be accepted (in addition, the prior art already discloses the feature without a gasket as described below). 

 

(B)           The Plaintiff argues that the ion exchange membrane and the flow frames on either side of the ion exchange membrane are prefixed, and thus the ion exchange membrane and the flow frames may be managed as a separate unit, thereby facilitating quality control.  Accordingly, there is a difference between Claim 1 and the conventional art and prior art in terms of their operation effects.

 

However, the grounds argued by the Plaintiff such as the possibility of separate management or ease of quality control are not the properties of the stack per se (which is the subject matter of Claim 1), i.e., they are not properties shown in the stack manufactured by Claim 1 and not in the stack manufactured by the conventional art or Prior Art 1, 2, and 3.  Rather, such grounds are considered as mere convenience in the manufacturing process of the stack.  Accordingly, it is not deemed that Claim 1 has remarkable or qualitatively different effects over Prior Art 1, 2, and 3.

 

Also, as explained above, there is no difference between Clam 1 and the conventional art or Prior Art 1, 2, and 3 in that not only an ion exchange membrane and flow frames but also an end plate, an insulating plate, a current plate, a bipolar plate, a gasket, electrodes, etc., are all stacked and fixed or combined in a completed stack.  Therefore, the feature of prefixing the ion exchange membrane and flow frames to construct a unit is not deemed to affect quality management after completing the stack.

 

(C)           The Plaintiff argues that a stack manufactured by Claim 1 has a unit cell structure by constructing the structure as a single unit, whereas the stacks manufactured by Prior Art 1, 2, and 3 fail to disclose a unit cell structure.  Thus, there is a structural difference between the inventions.

 

However, the stack manufactured by Claim 1 has a structure in which cells are repeatedly stacked in the order of ‘a separation plate (14)-a flow frame (16)-an electrode (17)-an ion exchange membrane (18)- an electrode (17)- a flow frame (16).’  The stack manufactured by the conventional art also has repeatedly stacked cells in the same order, and the stacks manufactured by Prior Art 1, 2, and 3 also have repeatedly stacked cells in the order of ‘a frame (3a)/a bipolar plate (2a)-a positive electrode (4a)-a separating membrane (1)-a negative electrode (4b)’(Prior Art 1), ‘a cell frame [120, a frame body (122)/bipolar plates (121)]-a positive electrode (104)-an ion exchange membrane (101)-a negative electrode (105)’ (Prior Art 2), or ‘a cell frame[2, a fixed frame (21)/a bipolar plate (20)]- a positive electrode (3)-a separate membrane (4)- a negative electrode (5)’ (Prior Art 3).  Also, the meaning of ‘fixed’ is not specifically defined in Claim 1.  Further, Claim 1 and the conventional art disclose that, using the separating membrane as a reference, flow frames, a battery, and an ion exchange membrane are stacked on either side of the separating membrane, and the prior art discloses a structure, using the separation plate as a reference, a frame/a fixed frame, a battery, and an ion exchange membrane are substantially stacked on either side of the bipolar plate.  In sum, there is no structural difference between the stack manufactured by Claim 1 and the stacks manufactured by Prior Art 1, 2, and 3.

 

(D)           The specification of the Subject Patent describes that there is an effect of reducing production costs by directly fixing the ion exchange membrane (18) to the flow frames (16) to form the ion exchange membrane (18) by allowing a smaller size.  However, considering that Fig. 3 of Prior Art 1 discloses that a separating membrane (1) is smaller in size than a frame (3a), the aforementioned effect of the Subject Patent is not deemed to be remarkable or qualitatively different over Prior Art 1.

 

3)              Whether Claim 2 has novelty and inventive step

 

The technical feature of Claim 2 lies in adding a limitation that ‘a gasket is not present’ between the prefixed ion exchange membrane and flow frames on either side of the ion exchange membrane to the features of Claim 1.

 

However, Prior Art 1 (see Plaintiff’s Exhibit No. 3) discloses a redox flow battery stack having the feature that a separating membrane (101) acts as a seal member, such that the separating membrane (101) and frames (3a, 3b) are directly closed and fixed without a gasket (see paragraph [0021]).  Also, Prior Art 3 discloses a redox flow battery stack having the feature that an ultraviolet curing type resin (11) is used as a seal member, such that the separating membrane (4) and fixed frames (21) on either side of the separating membrane or a cell frame are directly closed and fixed without a gasket (see paragraphs [0024] and [0039] and Fig. 3).

 

Accordingly, Claim 2 lacks novelty over Prior Art 1 and 3 or at least could have been easily invented by PHOSITA in view of Prior Art 1 and 3 and thus lacks inventive step.

 

With respect to the foregoing, the Plaintiff argues that Prior Art 3 discloses that an ultraviolet curing type resin (11) can be used as a seal member, and that the resin has a thickness of 1 mm or less, which is comparatively thick, such that the ultraviolet curing type resin has the same feature as the gasket.  We will now address this argument.

 

Claim 2 merely describes that an ion exchange membrane and flow frames on either side of the ion exchange membrane are prefixed without ‘a gasket’ between them, without including any limitation on the means for fixing the ion exchange membrane and flow frames.  Plaintiff’s Exhibit No. 11, meanwhile, describes that a gasket is a ‘generic term of thin plate-like piping parts that are inserted between connecting surfaces to airtightly seal a flanged connecting part of a pipe.’  For a pump, rubber with a rubber sheet inserted into it, O ring, asbestos joint seal, etc., can be used; and for a duct, asbestos tape having a thickness about 3 mm or plate-shaped asbestos plates can be used.  According to this description, a gasket is not deemed to have an adhesive function.

 

However, Prior Art 3 discloses that i) ultraviolet curing type resin can comprise ingredients such as adhesive (see paragraph [0036]), and that the ultraviolet curing type resin acts as an adhesive for attaching a separating membrane (4) and fixed frames (21) on either side of the separating membrane or a cell frame and also as a seal member since sealing is maintained by the aforementioned attachment (see paragraph [0039]); and ii) the thickness of the ultraviolet curing type resin can be chosen as appropriate according to the size of the stack to be assembled, and the thickness of 1 mm or less is suitable.  However, since there is no lower limit on the thickness, the thickness can be much less than said thickness (the thickness range defined in Claim 3 is included in the thickness range of the resin layer defined in Prior Art 3).  In light of the foregoing, the ultraviolet curing type resin in Prior Art 3 is deemed to be a kind of adhesives, and cannot be considered as a kind of gasket or to have a feature of the gasket.  Accordingly, the Plaintiff’s argument is without merit.

 

4)              Whether Claim 3 has novelty and inventive step

 

The technical feature of Claim 3 lies in adding the element that ‘the ion exchange membrane is attached to outer frames of the flow frames by using an adhesive or a double-sided tape’ to the features of Claim 2.

 

However, as explained above, Prior Art 3 discloses that a cell frame (a flow frame) is attached to a separating membrane (an ion exchange membrane) by using an ultraviolet curing type resin, which is a type of adhesive.  Accordingly, Claim 3 lacks novelty, or at least lacks inventive step, over Prior Art 3.

 

5)              Whether Claim 4 has novelty and inventive step

 

The technical feature of Claim 4 lies in adding the limitation that ‘an electrode is disposed in an inner empty space (16a) of each of the outer frames (16b) in the flow frames (16) and the ion exchange membrane (18) is larger in size than the electrode (17)’ to the elements of Claims 1 to 3.   In other words, according to Claim 4, the electrode is disposed in the inner empty space of the frame-shape flow frame, and, in this case, the ion exchange membrane is larger in size than the electrode.

 

However, Prior Art 1 discloses the element that electrodes (4a, 4b) are disposed in an inner empty space of a frame (3a), and an ion exchange membrane (a separating membrane, 1) is larger in size than the electrode (see Fig. 3).  Also, Prior Art 3 discloses that electrodes (3, 5) are disposed in a cell frame, in particular, in an inner space of a fixed frame (21), and that an ion exchange membrane (a separating membrane, 4) is larger in size than the electrode (see Fig. 3).

 

Accordingly, Claim 4 lacks novelty over Prior Art 3, or at least lacks inventive step over Prior Art 1 and 3.

 

6)              Whether Claim 5 has novelty and inventive step

 

A)             Technical features and the subject matter of the invention

 

Claim 5 is directed to ‘a method of assembling a redox flow battery stack’ having the technical feature that ‘when assembling a redox flow battery stack by stacking a plurality of plates, before the stacking, an ion exchange membrane (18) is prefixed to flow frames (16) to be disposed at either side of the ion exchange membrane’.  Thus, Claim 5 corresponds to ‘an invention of a process of manufacturing a product’.

 

B)             Whether Claim 5 has novelty

 

Prior Art 1, 2, and 3 fails to disclose a manufacturing method that, before the stacking, an ion exchange membrane (18) is prefixed to flow frames (16) to be disposed at either side of the ion exchange membrane to construct a unit set forth in Claim 5.  Thus, Claim 5 has novelty over Prior Art 1, 2, and 3.

 

C)             Whether Claim 5 has inventive step

 

The element of ‘before the stacking, an ion exchange membrane (18) is prefixed to flow frames (16) to be disposed at either side of the ion exchange membrane’ (hereinafter, referred to as the ‘unit-constituting element’) could not have been easily derived in view of Prior Art 1, 2, and 3 for the reasons explained above.  Further, this element provides remarkable or qualitatively different effects that could not have been predicted from Prior Art 1, 2, and 3.  Thus, Claim 5 could not have been easily derived in view of Prior Art 1, 2, and 3.  Accordingly, Claim 5 has inventive step.

 

(1)            In the process of assembling an existing redox flow battery stack formed by repeatedly stacking cells in the order of ‘a separation plate (14)-a gasket (15)-a flow frame (16)-an electrode (17)-a gasket (15)-an ion exchange membrane (18)-a gasket (15)- an electrode (17)-a flow frame (16)-a gasket (15)’, there is a technical problem that, when several hundred plates are pressurized to assemble a stack, it is difficult to align an ion exchange membrane formed of a flexible material without rigidity and a gasket formed of a flexible material without rigidity, the gasket being adjacent to the ion exchange membrane. Claim 5 of the Subject Patent seeks to solve this problem by using a unit-constituting element.

 

(2)            In contrast, Prior Art 1 relates to the problem that, with an existing redox flow battery, two sealing means, including a slot sealing and an O ring, are used to seal the cell electrode chamber, thus increasing the number of components and making the process difficult to handle.  Further, the use of a separating membrane that is larger in area than the electrode chamber results in unnecessary parts of the separating membrane (see paragraphs [0004] and [0005]).  To solve these problems, Prior Art 1 adopts the technical feature of employing a separating membrane that has a fixed thickness and is deformable by pressure.  The use of such separating membrane makes it possible to align frames on either side of the separating membrane and to attach a peripheral part of the separating membrane by pressure, such that the peripheral part can be used as a seal member (see paragraphs [0007] and [0008]).

 

Prior Art 2 relates to the problem that, when an existing redox flow battery is neither charged nor discharged, the drainage of the electrolysis solution is stopped to reduce the loss of standby power requirement and the inward pressure by the fastening mechanism (230) becomes larger than the outward pressure, exerting excessive compressive force on the cell frame (120).  This can cause the seal of the electrolysis solution to become insufficient (see paragraphs [0007] and [0008]).  To solve this problem, Prior Art 2 adopts the technical feature of equipping an attachment component (10) to support the gap between the end plates (see paragraphs [0010]).

 

Prior Art 3 relates to a problem that is experienced with an existing redox flow battery that uses plate-like packing and an O ring as the means to seal a gap between cell frames.  Specifically, when plate-like packing is used, if the cell frame and the plate-like packing are not completely laminated, it is difficult to prevent the leakage of the electrolysis solution.  This results in bad workability and inefficient work production (see paragraph [0008]).  Further, when using an O ring, the O ring is frequently omitted during construction, reducing work efficiency, and the process becomes more difficult to handle because it requires more components (see paragraph [0009]).  To solve this problem, Prior Art 3 adopts the technical feature of applying an ultraviolet curing type resin between the separating membrane and the fixed frame (21) of the cell frame (see paragraph [0011]).

 

(3)            As explained above, Prior Art 1, 2, and 3 is different from Claim 5 in terms of the problem to be solved and the means for solving the problem.  Further, they neither comprise a unit-constituting element, nor teach or suggest the element or provide motivation to derive the element, as described below in the judgment regarding the Defendant’s arguments.  Moreover, there are no grounds to recognize that it was obvious for PHOSITA to employ a unit-constituting element based on Prior Art 1, 2, and 3 to solve the problem to be solved in Claim 5.

 

(4)            Meanwhile, in the administrative decision, it was judged that the feature of ‘preassembling or prefixing some of the components to be stacked in the form of sub-assembly and thereby manufacturing a final product’ is merely well-known and widely used technology in the manufacturing business field.

 

However, Claim 5 relates to the specific technology of prefixing the ion exchange membrane and flow frames among many components in a method of assembling a redox flow battery stack, thereby overcoming difficulties in assembling a stack.  Characterizing this technology as well-known and widely used ‘sub-assembly’ technology is undue generalization of the concept of the well-known and widely used technology.  Accordingly, the aforementioned judgment cannot be accepted.

 

(5)            Claim 5 employs the element of ‘before the stacking, an ion exchange membrane is prefixed to flow frames to be disposed at either side of the ion exchange membrane’, and thereby has effects of i) facilitating the stack assembly and reducing the time consumed for assembly, ii) solving difficulties in assembling an ion exchange membrane formed of a flexible material and an adjacent gasket, iii) facilitating quality control, and iv) assuring a high quality stack (see paragraphs [0020] and [0021]).  As explained above, the aforementioned effects, in particular, the effects of i) and ii) are not implied in Prior Art 1 to 3, nor are they predictable by PHOSITA.

 

D)             Judgment on the Defendant’s Arguments

 

(1)            The Defendant argues that a unit-constituting element is disclosed in the description that ‘a plurality of redox flow battery cells that have the aforementioned structure are laminated and constitute a redox flow battery cell stack’ (paragraph [0034]), and Figs. 1 and 3, of Prior Art 1.

 

However, the aforementioned description, and Figs. 1 and 3, merely explain the structure of a plurality of cells that are laminated in the order of ‘a cell frame/bipolar plate, an electrode, an ion exchange membrane, and an electrode’.  Therefore, Prior Art 1 is not deemed to comprise a unit-constituting element of Claim 5, or teach or imply the element, or provide motivation to derive the element.  Accordingly, the Defendant’s aforementioned argument cannot be accepted.

 

i)  Based on the existing cell stack formed by laminating a plurality of cells in the order of ‘a cell frame/bipolar plate, an electrode, an ion exchange membrane, and an electrode’, Prior Art 1 seeks to solve the problem occurred when using two sealing means, a slot and an O ring, for sealing the cell electrode chamber by providing a peripheral part that can be used as a seal member.

 

ii)  Fig. 1 is an exploded perspective view of the cell part, and Fig. 3 is a cross-section diagram of the sealing structure of the electrode chamber.  Therefore, Figs. 1 and 3 cannot be deemed to be a structure map of an electrode chamber that constitutes a unit.

 

iii)  Furthermore, according to the Defendant’s argument, Figs. 1 and 3 illustrate a unit comprising ‘a frame (3b)/bipolar plate (2b)-a negative electrode (4b)-a separating membrane (1)-a positive electrode (4a)-a frame (3a)/bipolar plate (2a)’.  In this case, cells are stacked in the order of ‘a frame (3b)/bipolar plate (2b)-a negative electrode (4b)-a separating membrane (1)-a positive electrode (4a)-a frame (3a)/ a bipolar plate (2a)-a frame (3b)/ a bipolar plate (2b)-a negative electrode (4b)-a separating membrane (1)-a positive electrode (4a)-a frame (3a)/bipolar plate (2a)’, and there is the problem that bipolar plates are directly overlapped as indicated in bold above.

 

(2)            The Defendant argues that a unit-constituting element is disclosed in the description that, ‘in the process B of the manufacturing method of the cell stack, an arrangement of the laminated body can be carried out by stacking a cell frame, electrodes, and an ion-exchange membrane on an end plate one by one, or can be carried out by stacking a certain number of cell frames, electrodes, and the ion-exchange membrane first and then putting the laminated body on the end plate, repeatedly’ (see paragraph [0023]).

However, the abovementioned description of Prior Art 2 merely explains that when stacking each component such as a cell frame, etc., on an end plate, each component can be stacked one by one on the end plate, and that when some of the components are stacked outside the end plate to construct a laminated body, the laminated body is then put on the end plate and this process is repeated.

 

Therefore, Prior Art 2 cannot be considered to comprise a unit-constituting element, teach or imply the element, or provide motivation to derive the element.  Accordingly, the Defendant’s aforementioned argument cannot be accepted.

 

i)  The aforementioned description of the Specification of Prior Art 2 relates to a process in which the laminated body containing a cell frame with a cylindrical pressure support member is arranged on the end plate during the cell stack manufacturing (see paragraph [0005]), assuming that the cell stack is fastened with a fastening mechanism (230) (see paragraph [0023]).

 

ii)  Prior Art 2 merely discloses that the cell frame comprises a frame, a bipolar plate united with a frame, and an annular seal member that is provided in the frame for confining an electrolysis solution in the center of the frame (see Claim 1).

 

iii)  The expression ‘laminating’ generally means ‘piling up’, and does not connote the meaning of ‘fixing’.  Further, Prior Art 2 does not provide other specific descriptions regarding laminating of a cell frame, etc., other than the above description.

 

iv)  Fig. 1 only shows a laminated structure in the order of ‘a cell frame[120, a frame (122)/bipolar plate (121)]-a negative electrode (105)-an ion exchange membrane (101)-a negative electrode (104)’.  Therefore, a unit-constituting element is not identified from Fig. 1.

 

v)  According to the Defendant’s argument, Fig. 7 illustrates a unit comprising ‘a cell frame[120, a frame (122)/bipolar plate (121)]-a negative electrode (105)-an ion exchange membrane (101)-a positive electrode (104)-a cell frame[120, a frame (122)/bipolar plate (121)]’.  In this case, there is the problem that the bipolar plates directly overlap, as explained above.

 

vi)  If the description of Prior Art 2 regarding constituting a laminated body is to be read as prefixing and constructing a unit, there must be a means for fixing, but Prior Art 2 nowhere discloses a means for fixing.

 

(3)            The Defendant argues that a unit-constituting element is disclosed in the description in Prior Art 3 that ‘the cell laminated body (10) is formed by laminating plural cells wherein electrodes [a positive electrode (3) or a negative electrode (5)] and a cell frame are arranged.  The aforementioned cell is constructed with two cell frames (2) attached with a seal member (11) and having a separating membrane (4) in between the cell frames.  An electrolysis solution is enclosed within the inner circumference of the seal member (11).  The positive electrode (3) and the negative electrode (5) are arranged between the separating membrane (4) and the bipolar plate (20) of the cell frame (2)’ (see paragraph [0019]) and Fig. 3).

 

However, this description of Prior Art 3 appears to merely explain that the cell laminated body (10) is made by laminating plural cells, as discussed below.  Therefore, Prior Art 3 is not deemed to comprise a unit-constituting element, teach or imply the element, or provide motivation to derive the element.  Accordingly, the Defendant’s aforementioned argument cannot be accepted.

 

i)  Prior Art 3 seeks to solve the problem occurred when employing a plate-like packing and O ring as means to seal a gap between cell frames, for the existing cell stack laminated in the order of ‘a cell frame/bipolar plate, an electrode, an ion exchange membrane, and an electrode’ (see paragraph [0011]), by using an ultraviolet curing type resin.

 

ii)  Fig. 3 is a cross-sectional diagram showing the feature of the cell, and thus it cannot be deemed to be a unit structure map of the cell frame and the ion exchange membrane.

 

iii)  According to the Defendant’s argument, Fig. 3 illustrates a unit comprising ‘a cell frame [2, a fixed frame (21)/bipolar plate (20)]-a positive electrode (3)-a separating membrane (4)- a negative electrode (5)-a cell frame [2, a fixed frame (21)/bipolar plate (20)]’.  This results in the problem that bipolar plates directly overlap.

 

iv)  In addition to the above description of Prior Art 3, the specification of Prior Art 3 discloses that: ‘As shown in Fig. 2, the seal members (11), which prevent leakage of the electrolysis solution to the outside of the cell laminated body (10), are provided on either side of the fixed frame (21).  The seal members (11) are arranged along the periphery of the fixed frame (21), in two parallel rows and in frame shape.  The seal member on one side is provided along with the outer periphery edge of the fixed frame (21), and the seal member on the other side is provided along with the inner periphery edge (opening 22) of the fixed frame (21), respectively, and there can be a predetermined interval so that a manifold (23) can be disposed between the seal members’ (see paragraph [0024]).  Prior Art 3 also discloses that: ‘As a method of forming the seal member (11) with ultraviolet curing type resin, as an example, ultraviolet curing type resin is used as a solution and this solution is applied by a well-known method, such as gravure coating, printing, etc., in two parallel rows, in frame shape along certain positions of the cell frame (2), i.e., the periphery of the fixed frame (21).  After placing the positive electrode (3), the separating membrane (4), and the negative electrode (5) on the cell frame (2), to which ultraviolet curing type resin was applied, another cell frame (2) is piled up after applying ultraviolet curing type resin.  A prescribed number (for example, 96 sheets) of cell frames (2) are piled up in this sequence, and each cell frame (2) is pressed.  Then ultraviolet rays are irradiated on the cell laminated body (10) formed by laminating a plurality of the cell frames (2), etc., by an ultraviolet irradiation device, and the resin is cured’ (see paragraphs [0038] and [0039]).  In sum, Prior Art 3 discloses laminating cells in the order of a cell frame, a positive electrode, a separating membrane, and a negative electrode, and then irradiating ultraviolet rays on the laminated body to fix it.  Therefore, Prior Art 3 fails to disclose a unit-constituting element set forth in Claim 5.

 

v)  The ultraviolet curing type resin has viscosity and comprises adhesive ingredients (see paragraphs [0036], [0044], and [0045]), such that the separating membrane and the cell frame can be fixed in the process of laminating the cell frame, etc.  However, they are merely fixed in the laminating step, and are not prefixed to construct a unit before lamination.

 

(4)            The Defendant argues that Claims 1 to 4 lack inventive step, and thus Claims 5 to 8, which are substantially identical to Claims 1 to 4 and differ only with respect to the category of the invention, also lack inventive step.

 

However, Claims 5 to 8 are different from Claims 1 to 4 in terms of the subject matter of the invention in that the former pertains to an invention of a process of manufacturing a product, whereas the latter pertains to an invention of a product.  Accordingly, the meaning of each element regarding the subject matter of the invention can be different as explained above, and different judgment can be rendered regarding inventive step of Claims 5 to 8 and Claims 1 to 4.  Therefore, the abovementioned Defendant’s argument is without merit.

 

7)              Whether Claims 6 to 8 have novelty and inventive step

 

Claims 6 to 8, which are dependent upon Claim 5, limit or add to the elements of Claim 5. Since Claim 5 has novelty and inventive step in view of Prior Art 1 to 3, Claims 6 to 8 also have novelty and inventive step in view of Prior Art 1 to 3.

 

C.             Summary of the Review

 

As discussed above, Claims 1 to 4 lack novelty or inventive step in view of Prior Art 1 and 3, so that the registration of Claims 1 to 4 shall be invalidated, and the relevant decision of the administrative decision reaching the same conclusion is proper.

 

In contrast, Claims 5 to 8 have novelty and inventive step in view of Prior Art 1 to 3, so that the registration of Claims 5 to 8 shall not be invalidated, and the relevant decision of the administrative decision reaching a different conclusion is improper and shall be cancelled.

 

3.              Conclusion

 

Accordingly, since the Plaintiff’s claim regarding Claims 5 to 8 is supported, the Court accepts the claim and cancels the relevant decision in the administrative decision.  However, the Plaintiff’s remaining claims are without merit, and the Court dismisses these claims and issues a decision as stated in the Order.

 

Presiding Judge :  Youngjoon OH          

Judge:  Dongju KWON

Judge:  Donggyu KIM  

 

 

[Annex]

 

Main Figures of Prior art

 

1. Prior Art 1

 

[Fig. 1]	[Fig. 3]	[Fig. 4]

 

 

2. Prior Art 2

 

[Fig. 1]	[Fig. 7]

 

 

3. Prior Art 3

 

[Fig. 1]	[Fig. 3]	[Fig. 5]
[Fig. 6]	[Fig. 7]