Ex Parte Benedict et al

Patent Trials and Appeals Board

Mar 7, 2019

15006233 - (D) (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/006,233 01/26/2016
46442 7590 03/11/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Scott Benedict
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83618386; 67186-237PUS1 3195
EXAMINER
NEDIALKOV A, LILIA V
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
03/11/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT BENEDICT,
BRENT ZAPCZYNSKI, MICHAEL REIBLING,
EID FARHA, and PATRICK DANIEL MAGUIRE
Appeal2018-001215
Application 15/006,233
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner variously rejected claims 1, 2, 4--11, and 13-22 of
Application 15/006,233 under 35 U.S.C. § l 12(a) as lacking written
description support, under 35 U.S.C. §§ 102(a)(l) and 102(a)(2) as
anticipated, or in the alternative, under 35 U.S.C. § 103 as obvious. Final
Act. (March 23, 2017). Appellant 1 seeks reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
1 Ford Global Technologies, LLC is identified as the applicant and real party
in interest. Appeal Br. 1.
Appeal2018-001215
Application 15/006,233
For the reasons set forth below, we affirm.
BACKGROUND
The '233 Application describes apparatus and methods for securing a
battery array within a battery pack enclosure space. Spec. ,r 1. According to
the Specification, "[ m Jany techniques for securing the battery arrays within
the battery pack enclosure require significant packaging space." Id., ,r 3.
The Specification describes apparatus and methods for, inter alia, securing
the endplate of a battery array directly to the enclosure wall of the battery
pack enclosure from outside an open area of the battery pack enclosure,
thereby reducing the require space. Id., ,r 4.
Claims 1 and 14 are representative of the '233 Application's claims
and are reproduced below:
1. A battery assembly, comprising:
a first endplate of a first battery array;
a second endplate of a second battery array; and
an enclosure wall secured directly to the first and second
end plates from outside an open area of a battery pack enclosure
or any other battery enclosure.
Appeal Br. 16 (Claims App.).
14. A method of securing a battery array, comprising:
positioning a first and a second battery array within an
open area of an enclosure; and
from a position outside the open area of the enclosure or
any other enclosure, securing a first endplate of the first battery
array and a second endplate of the second battery array directly
to a wall of the enclosure.
Id. at 17.
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Application 15/006,233
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4--11, 13, 21, and 22 are rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description
requirement. Answer 2.
2. Claims 14--20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Answer 3.
3. Claim 6 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Answer 4.
4. Claim 13 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Answer 5.
5. Claims 1, 2, 6, 9, 11, 14, 20, and 22 are rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Kurokawa. 2 Answer 6.
6. Claims 1, 2, 7, 8, 10, 13, 14, 20, and 22 are rejected under 35
U.S.C. § I02(a)(l) as anticipated by Lee. 3 Answer 9.
7. Claims 1, 9, 14--16, and 20-22 are rejected under 35 U.S.C.
§ I02(a)(2) as anticipated by Yamada. 4 Answer 12.
8. Claims 2, 4, 5, and 17-19 are rejected under 35 U.S.C. § I02(a)(2)
or, in the alternative, under 35 U.S.C. § 103 as obvious over
Yamada. Answer 1 7.
2 US 2013/0136970 Al, published May 30, 2013.
3 US 2011/0151311 Al, published June 23, 2011.
4 US 2016/0190526 Al, published June 30, 2016.
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Appeal2018-001215
Application 15/006,233
DISCUSSION
Rejection 1. The Examiner rejected claim 1 as failing to comply with
the written description requirement. Answer 2-3. Claims 2, 4--11, 13, 21,
and 22 are rejected based upon their dependency from claim 1. Id. at 3.
To comply with the written description requirement, the specification
must convey with reasonable clarity to a person of ordinary skill in the art
that, as of the filing date, the applicant was in possession of the claimed
invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F .3d
1115, 1122 (Fed. Cir. 2008). The sufficiency of an application's written
description is a question of fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
In this case, claim 1 includes the recitation "an enclosure wall secured
directly to the first and second endplates from outside an open area of a
battery pack enclosure or any other battery enclosure." (Emphasis added).
The italicized language was added by way of an amendment in the Response
to Non-Final Office Action filed on February 22, 2017. The Examiner
found that this phrase was not supported by the '233 Application's
Specification and Figures. Answer 3.
After reviewing the Specification and Figures, we determine that the
Examiner did not err in finding that the phrase "or any other battery
enclosure" is not supported by the written description. Each of the examples
provided in the Specification describes directly attaching an enclosure wall
of a battery pack enclosure directly to the first and second endplates of first
and second battery arrays. See, e.g., Spec. ,r,r 43-80; Figures 2-10. The
Specification does not describe or discuss directly securing an enclosure
wall of any other type of battery enclosure to the first and second endplates
of first and second battery arrays.
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Appeal2018-001215
Application 15/006,233
Appellant argues that written description support for the limitation at
issue is provided by at least paragraphs 35, 59, and 81, and Figures 2 and 4--
8. Appeal Br. 3--4. With the possible exception of paragraph 35, each of
these portions of the Specification and the Figures discusses or depicts
directly attaching an enclosure wall of a battery pack enclosure to the first
and second endplates of first and second battery arrays.
We reproduce paragraph 35 below:
This disclosure relates generally to securing battery
arrays within an enclosure of a battery pack. The securing
techniques disclosed herein utilize relatively little packaging
space. The securing can occur from a position outside an open
area of the enclosure. That is, the securing can occur from a
position that is external to the battery pack.
Spec. ,r 35.
We find that, when read in context with the entirety of the '233
Application's Specification and Figures, a person of ordinary skill in the art
would understand the reference in paragraph 35 to an "enclosure of a battery
pack" as referring to a "battery pack enclosure" and not to some "other
battery enclosure." We therefore determine that paragraph 35 also does not
support the limitation at issue.
In view of the foregoing, we affirm the rejection of claims 1, 2, 4--11,
13, 21, and 22 as lacking support in the '233 Application's written
description.
Rejection 2. The Examiner rejected the independent claim 14 as
failing to comply with the written description requirement. Answer 3.
Claims 15-20 were rejected based upon their dependence from claim 14. Id.
Claim 14 includes the limitation "from a position outside the open
area of the enclosure or any other enclosure, securing a first endplate .... "
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Appeal2018-001215
Application 15/006,233
The Examiner found that the italicized phrase lacked written description
support for essentially the reasons discussed in connection with claim 1,
supra. Answer 3. Appellant's response to this rejection is essentially the
same as that proffered in support of claim 1.
For the reasons we discussed in connection with Rejection 1, we also
affirm the rejection of claims 14--20 as lacking written description support.
Rejection 3. Appellant does not contest the rejection of claim 6 as
indefinite. Appeal Br. 8. 5 We, therefore, summarily affirm this rejection.
Rejection 4. Appellant does not contest the rejection of claim 13 as
indefinite. Appeal Br. 8. We, therefore, summarily affirm this rejection.
Rejection 5. The Examiner rejected claims 1, 2, 6, 9, 11, 14, 20, and
22 as anticipated by Kurokawa. Answer 6. For the reasons set forth below
we reverse this rejection.
To anticipate, a "reference must disclose each and every element of
the claimed invention, whether it does so explicitly or inherently." In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
5 Appellant's Reply Brief states that Rejections 3 and 4 were indicated as
withdrawn in the Examiner's Answer. Reply Br. 1. This is incorrect. These
rejections are indicated as being maintained. Answer 5. See also id. at 21
("Appellant does not dispute the outstanding rejections of claims 6 and 13
under 35 U.S.C. 112(b )." ( emphasis added)).
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Appeal2018-001215
Application 15/006,233
For ease of reference, we reproduce Kurokawa's Figure 5 below:
FIG. 5
l l-58 ,. 58 . 26 !
I
Figure 5 is an exploded oblique view showing vertically
layered battery blocks in Kurokawa's assembly.
Kurokawa ,r 24.
In rejecting the independent claims, the Examiner found that floor
panel 40 corresponds to the claimed enclosure wall. Floor panel 40 is
directly secured to the endplates 7 of first and second battery arrays 10 by
bolts 56 that pass through openings 45 in floor panel 40. Answer 6-7.
We reverse the rejection of independent claims 1 and 14 because the
Examiner erred by finding that floor panel 40 corresponds to the claimed
enclosure wall. To be an enclosure wall, the wall must be part of a battery
pack enclosure. Here, the Examiner has not identified the battery pack
enclosure, and, therefore, has not supported the finding that floor panel 40 is
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Appeal2018-001215
Application 15/006,233
an enclosure wall. We note that the combination of floor panel 40 and base
panel 41 does not together define a battery pack enclosure because they do
not surround or otherwise enclose6 the battery pack. Moreover, without
identifying the battery pack enclosure, one cannot locate the open area of the
battery pack enclosure. Thus, one cannot determine whether the enclosure
wall is directly secured to the first and second endplates from outside an
open area of a battery pack enclosure.
Rejection 6. The Examiner rejected claims 1, 2, 7, 8, 10, 13, 14, 20,
and 22 as anticipated by Lee. Answer 9. For the reasons set forth below, we
reverse this rejection.
For ease of reference, we reproduce Lee's Figure 2:
.. ·· :,....._
FIG. 2
Lee's Figure 2 is an exploded perspective view showing
elements of a battery module. Lee ,r 16.
6 The ordinary meaning of the term "enclose" is "to close in" or "surround."
Webster's Ninth New Collegiate Dictionary 409 (1989). See also Shorter
Oxford English Dictionary 826 (2007) ( defining enclose: "of things:
surround; and develop; contain").
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Appeal2018-001215
Application 15/006,233
Lee's Figure 2 depicts a plurality of the battery cells 110 sandwiched
between two endplates 150. Id. at 9--10. In rejecting claims 1 and 14, the
Examiner arbitrarily divides the plurality of battery cells 110 into two arrays,
the recited first array and second array. Id. Each is associated with one of
the endplates 150. Id. The Examiner states that "Appellant should note that
the language of claim 1 does not exclude [this] arrangement." Answer 26.
We disagree. While claims are broadly construed during examination,
the broad construction must be reasonable when the application's
specification is considered. See In re Imes, 778 F.3d 1250, 1254 (Fed. Cir.
2015) ("[ A claim] construction is unreasonable [when] it comports with
neither the plain meaning of the term nor the specification."). We conclude
that a person of ordinary skill in the art would understand that a "battery
array" is a plurality of unit cells coupled to two endplates and otherwise
bound together in some manner. See, e.g., Spec. ,r 44 ("Each of the example
battery arrays 18 includes battery cells 56, binding arms 58, and a pair of
endplates 62."). Thus, the Examiner's inherent construction which allows a
single battery array to be divided into two arrays, each with a single endplate
is unreasonable in view of the '233 Application's Specification.
Because the Examiner erred by finding that the relied-upon portion of
Lee describes a first and second battery array attached to the same enclosure
wall, we reverse the anticipation rejection of independent claims 1 and 14.
Rejection 7. The Examiner rejected claims 1, 9, 14--16, and 20-22 as
anticipated by Yamada. Answer 12. For the reasons set forth below, we
reverse this rejection.
In rejecting independent claims 1 and 14, the Examiner found that the
first and second battery arrays are held within a battery enclosure defined by
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Appeal2018-001215
Application 15/006,233
first duct member 58a, second duct member 58b, and a pair of endplates 28a
and 28b. Answer 13, 15 (citing Yamada ,r 25, Figures 1-3).
We reverse because the Examiner erred by finding that Yamada
describes an enclosure. In particular, the Examiner erred because the '233
Application's Specification describes the enclosure as having both sidewalls
and endwalls. Spec. ,r,r 47-58 (describing endwalls in detail). The
Specification distinguishes between the endwalls of the enclosure and the
endplates of the battery arrays. Id. We conclude that a person of ordinary
skill in the art, having reviewed the Specification would understand that the
endplates of the battery arrays cannot perform double duty by also serving as
end walls of the battery pack enclosure.
Rejection 8. The Examiner rejected claims 2, 4, 5, and 17-19 as
anticipated by, or in the alternative, obvious over Yamada. Answer 17. As
discussed above, we have reversed the rejection of independent claims 1 and
14 as anticipated by Yamada because the Examiner erred by finding that
Yamada disclosed a battery pack enclosure. We, therefore, also reverse the
rejection of these dependent claims as either anticipated by or obvious over
Yamada.
CONCLUSION
We affirm the rejection of claims 1, 2, 4--11, and 13-22 as lacking
written description support. We also summarily affirm the rejection of
claims 6 and 13 under 35 U.S.C. § 112(b) as indefinite.
We reverse the rejection of claims 1, 2, 6, 9, 11, 14, 20, and 22 as
anticipated by Kurokawa. And we reverse the rejection of claims 1, 2, 7, 8,
10, 13, 14, 20, and 22 as anticipated by Lee. We also reverse the rejection of
claims 1, 9, 14--16, and 20-22 as anticipated by Yamada. Furthermore, we
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Appeal2018-001215
Application 15/006,233
reverse the rejection of claims 2, 4, 5, and 17-19 as either anticipated by or,
in the alternative, obvious over Yamada.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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