Ex Parte Byun et alDownload PDFPatent Trial and Appeal BoardMar 23, 201611979268 (P.T.A.B. Mar. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111979,268 10/31/2007 8439 7590 03/25/2016 ROBERT E BUSHNELL & LAW FIRM 2029 K STREET NW SUITE 600 WASHINGTON, DC 20006-1004 FIRST NAMED INVENTOR Jeong-Deok Byun 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. P58425 6685 EXAMINER WANG, EUGENIA ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 03/25/2016 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): rebushnell@aol.com mail@rebushnell.com info@rebushnell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEONG-DEOK BYUN and KYUNG-WON SEO Appeal2014-007590 Application 11/979,268 Technology Center 1700 Before MICHAEL P. COLAIANNI, ELIZABETH M. ROES EL, and JULIA HEANEY, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 30-36 and 45-52. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Samsung SDI Co., Ltd. as the real party in interest. App. Br. 3. Appeal2014-007590 Application 11/979,268 STATEMENT OF THE CASE Claimed Invention Appellants claim a protection circuit assembly for a battery pack. App. Br. 4; Spec i-fi-f l, 2. An exemplary embodiment is shown in Figure 2, which is reproduced below from Appellants' Specification: FIG. 2 630 / __ _,. / 610, ......... ___ _ 530"'- ....... "-.__. __ _ Figure 2 is an exploded perspective view of a battery pack, including bare cell 500 to which is connected a protection circuit assembly including 2 Appeal2014-007590 Application 11/979,268 protection circuit board 610 and upper case 630. Spec. i-fi-f 13, 31. Protection circuit board 610 includes at least one projection 650 formed at both side surfaces thereof, and upper case 630 includes at least one hole 660 corresponding to the projection 650. Id. i133. Claims 30-32 are representative of the subject matter on appeal and are reproduced below from Appellants' Claims Appendix, with bold added for emphasis: 30. A protection circuit assembly, comprising: an upper case comprising a first case surface, a second case surface opposite to the first case surface and case side surfaces perpendicular to the first case surface and the second case surface, the case side surfaces comprising a first case side surface including at least one first hole, a second case side surface opposite to the first case side surface, a third case side surface perpendicular to the first case side surface and the second case side surface, and a fourth case side surface opposite to the third case side surface; and a protection circuit board comprising a first board surface facing the second case surface of the upper case, a second board surface opposite to the first board surface and board side surfaces facing the case side surfaces of the upper case, the board side surfaces comprising a first board side surface facing the first case side surface, a second board side surface facing the second case side surface, a third board side surface facing the third case side surface, and a fourth board side surface facing the fourth case side surface; wherein the first board side surface of the protection circuit board includes at least one first flat projection extending outward of the protection circuit board; and wherein said at least one first flat projection is inserted into said at least one first hole. 3 Appeal2014-007590 Application 11/979,268 31. The protection circuit assembly as set forth in claim 30, wherein a length of said at least one first flat projection is same as a thickness of each of the case side surfaces of the upper case. 32. The protection circuit assembly as set forth in claim 30, wherein the first board side surface and the second board side surface are shorter than the third board side surface and the fourth board side surface, respectively. App. Br. 30-31. Claims 30 and 47 are the only independent claims. Claim 47 is the same as claim 30, except that the preamble of claim 47 recites a "battery pack," the body of claim 4 7 recites an additional element, "a bare cell," and the final "wherein" clause of claim 47 recites the preposition "in" instead of "into." Hovi et al. Yoon et al. Jeon Kruger et al. References US 2003/0082441 Al US 2005/0208345 Al US 2006/0099492 Al US 2006/0234119 Al May 1, 2005 Sept. 22, 2005 May 11, 2006 Oct. 19, 2006 The Rejections ("Hovi") ("Yoon") ("Jeon'') ("Kruger") 1. Claims 30 and 45--47 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoon in view of Hovi. Final Action 2-6. 2 2. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Yoon in view of Hovi, as applied to claim 30, and further in view of Jeon. Id. at 6-8. 2 Final Action dated October 16, 2013. 4 Appeal2014-007590 Application 11/979,268 3. Claims 32-36 and 48-52 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoon in view of Hovi, as applied to claims 30 and 47, and further in view of Kruger. Id. at 8-13. ANALYSIS Appellants' arguments are directed to independent claims 3 0 and 4 7, of which claim 30 is representative, and dependent claims 31 and 32 only. The remaining dependent claims are not separately argued. App. Br. 7-29. As a consequence, the remaining dependent claims stand or fall with their parent claims, and we confine our discussion to independent claim 30 and dependent claims 31 and 32. Claim 30 The Examiner finds that Yoon teaches a protection circuit assembly, as described in claim 30, except for the locations of the projection and hole. Final Action 2--4. More specifically, the Examiner finds that Yoon teaches a projection on an upper case side surface and a corresponding groove (hole) in a protection circuit board side surface, instead of a projection on the protection circuit board and a hole in the upper case, as recited in the bolded portions of claim 30 above. Id. at 4 (citing Yoon Fig. 6, i-fi-126, 61 ). The Examiner finds that Hovi teaches a protection circuit board including projections and an upper case including corresponding holes. Id. (citing Hovi Figs. 7-9, i-fi-161---62). The Examiner concludes that it would have been obvious to modify the teachings of Yoon so as to have the projection on the circuit board, rather than on the case, and the corresponding groove (hole) on the case, rather than on the circuit board, "as the substitution would have 5 Appeal2014-007590 Application 11/979,268 yielded the predictable result of fixing the upper case and protection circuit board." Id. at 4--5. Appellants argue that the Examiner's proposed modification of Yoon in view of Hovi would merely result in the circuit board of Hovi, with projections extending from the face, rather than the side surfaces, of the circuit board and holes in the face, rather than the side surfaces, of the case. App. Br. 13-15; Reply Br. 12. Appellants contend that the Examiner improperly relies on rearrangement of parts in a combination of references (Yoon and Hovi) and that the Examiner's findings are insufficient to show obviousness of rearranging the parts in Yoon alone. App. Br. 16-19; Reply Br. 14--15.3 Upon consideration of the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error, and we find that a preponderance of evidence supports the Examiner's conclusion that the subject matter of claim 30 is unpatentable over the applied prior art. We sustain the rejection of claim 30 based on the Examiner's findings of fact, conclusions of law, and rebuttals to Appellants' arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. 3 To the extent that Appellants argue that the Examiner's rejection involves a new ground of rejection, App. Br. 19, that argument should have been raised, if at all, by petition to the Director pursuant to 3 7 C.F .R. § 1.181 and is outside the jurisdiction of the Board. See MPEP § 1201, 9th ed. (2014) ("The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition ... "). 6 Appeal2014-007590 Application 11/979,268 The evidence establishes and the Appeal Brief does not dispute that, like Appellants, Yoon teaches a protection circuit assembly in which two parts-a protection circuit board and an upper case-are coupled together by means of a flat projection extending from a side surface of one of these parts and a corresponding hole into which the projection is inserted in a side surface of the other part. Compare App. Br. 30 (claim 30); Spec. Figs. 2, 3A, 3B, i-fi-133, 36, with Yoon, Fig. 6, i-fi-126, 60, 61. Whereas Yoon Figure 6 shows an arrangement in which projections extend from the side surfaces of an upper case (lateral parts 411 of housing 401) and are inserted in holes (guide grooves 321) in the side surfaces of protection circuit board 301, Yoon Fig. 6, i1 61, Appellants claim a configuration in which a projection extends from the side surface of the circuit board and is inserted in a hole in the side surface of the upper case, App. Br. 30 (claim 30). Appellants' arguments do not persuade us of error in the Examiner's conclusion that it would have been obvious to modify the arrangement taught by Yoon Figure 6 to switch the positions of the projections and holes, resulting in the arrangement recited in claim 30, either based on the teachings of Yoon alone or based on the combined teachings of Yoon and Hovi. Final Action 4--5; Ans. 15-19. When projections and corresponding holes are used as a means for coupling two different parts together, the cited teachings of the prior art, as well as logic and common sense, are sufficient to show that the projection can extend from either one of the parts, and the corresponding hole can be in the other part, providing two predictable alternatives that would have been at least obvious to try. Yoon, Fig. 6, i-fi-126, 61; Hovi Figs. 7-9, i-fi-161---62. Appellants provide no reason why both 7 Appeal2014-007590 Application 11/979,268 of these alternatives would not have been available, predictable, and obvious to one of ordinary skill in the art seeking ways to couple a circuit board and an upper case in a protection circuit assembly, such as that taught by Yoon. KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."). The Examiner correctly relies on Hovi to show that it was known in the art to put projections on a protection circuit board and have those projections fit into holes in the upper cap. Ans. 17. Appellants argue that the combination of Yoon and Hovi would not have resulted in projections and holes in the side surfaces of the circuit board and case, as claimed. App. Br. 13-15. That argument, however, relies on physical incorporation of Hovi's projections/holes into Yoon's Figure 6 assembly, which is not the basis for the Examiner's rejection, and relies on an unduly narrow view of Hovi's teachings. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) ("A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect."). The Examiner's conclusion is supported by paragraph 26 of Yoon, which expressly discloses that the projections can be provided on either part-the protection circuit or the cap housing-and that the grooves (holes) are provided on the other part. Yoon i-f 26; see Final Action 4 (citing Yoon i-f 26). Thus, the modification of Yoon Figure 6 proposed by the Examiner is expressly taught by Yoon. 8 Appeal2014-007590 Application 11/979,268 The Examiner's conclusion is still further supported by Jeon Figures 6, 7, and 10. The Examiner finds, and Appellants do not dispute, that these figures show two alternative ways to couple two different parts of a battery-a cell and a cover. Final Action 7. In the embodiment shown in Figures 6 and 7, cover 600 is coupled to cell 400 by means of hooks 420, which protrude from cell bracket 440 and fit into corresponding holes 610 in cover 600. Jeon i-fi-132-34. Figure 10 shows a "substantially opposite" arrangement, in which hooks 640 protrude from cover 600 and fit into corresponding holes 610 in cover 600. Id. i137. Accordingly, Jeon teaches that, when coupling two different parts together by means of projections and corresponding holes, the projections can be positioned on either part, and the holes can be positioned on the other part. Jeon's teaching thus reinforces the Examiner's conclusion that it would have been obvious to one of ordinary skill in the art to switch the positions of the projections and holes (grooves) in Yoon Figure 6. The Appeal Brief does not challenge the Examiner's finding that a "hole," as recited in claim 30, reads on guide grooves 321 of Yoon. Final Action 4 (Yoon has "a groove/hole ... wherein the projection is inserted into the groove."). The Reply Brief argues for the first time that Yoon's elongated grooves are not a hole and that substitution of Hovi' s projections/holes for Yoon's groove/projection would destroy the intent and functionality of the latter as taught by Yoon. Reply Br. 9-10, 16-18. Appellants provide no excuse for not presenting these arguments earlier. The arguments are untimely and will not be considered. 37 C.F.R. § 41.41(b)(2); Ex parte Nakashima, No. 2009-001280, 2010 WL 191183, *1 9 Appeal2014-007590 Application 11/979,268 (BP AI Jan. 7, 2010) (informative) ("any argument not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief'). Based on the foregoing, the weight of the evidence supports the Examiner's conclusion of obviousness. Therefore, the rejection of claim 30 under 35 U.S.C. § 103(a) is sustained. Claim 31 The Examiner finds that the combination of Yoon and Hovi does not render obvious that a length of the flat projection is same as a thickness of each of the case side surfaces of the upper case, as recited in claim 31. Final Action 6. The Examiner finds that Jeon teaches projections/holes for fixing a cap to a battery cell, including one embodiment (Figures 6, 7) in which the length of the projection is not equal to the thickness of the cap that includes the hole and an alternative embodiment (Figure 10) in which the projection extends through the entire thickness of the cap. Id. at 7. The Examiner concludes that it would have been obvious to substitute one of these configurations for the other, and that the substitution would provide "the predictable result of having alignment and fixing via the hole/projection." Id. Appellants argue that one of ordinary skill in the art would not have been motivated to modify the length of the projections in the combination of Yoon and Hovi, because that combination "already yields the predictable result of fixing the upper case and the protection circuit board." App. Br. 20; see also Reply Br. 20 (arguing that Examiner's reasoning is based on 10 Appeal2014-007590 Application 11/979,268 improper hindsight). Appellants further argue that the cited teachings of Jeon are not relevant to fixing a protection circuit board to a cap, id. at 21; that Jeon's projection is not a flat projection, id. at 22; that it is "untenable" that Jeon's alternative embodiment provides a different predictable result than Jeon's Figure 7 embodiment, id. at 23; that the Examiner fails to show how a flat projection extending from a protection circuit board would fit into a hole in Yoon's sidewall 411 without being damaged, id. at 23-24; and that putting holes in Yoon's sidewall 411 would leave the protection circuit board vulnerable to contaminants, id. at 24. Upon consideration of the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error, and we find that a preponderance of evidence supports the Examiner's conclusion that the subject matter of claim 31 is unpatentable over the applied prior art. We sustain the rejection of claim 31 based on the Examiner's findings of fact, conclusions of law, and rebuttals to Appellants' arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. We are persuaded that a preponderance of the evidence supports the Examiner's finding that Jeon teaches two alternative configurations for projections/holes: one in which the projection is shorter than the thickness of the sidewall having a hole into which the projection is inserted, and another in which the projection is the same length as the thickness of the sidewall having a hole into which the projection is inserted. Final Action 7; Jeon Figs. Figs. 6, 7, 10, i-fi-132-34, 37. Appellants concede that the first configuration provides a predictable result, App. Br. 23, and do not provide 11 Appeal2014-007590 Application 11/979,268 evidence or reasoning sufficient to persuade us that the Examiner errs in concluding that Jeon's alternative configuration provides the same predictable result of "having alignment and fixing via the hole/projection." Final Action 7; Ans. 30. Appellants do not persuade us that the Examiner errs in finding that the teaching of Jeon regarding the length of a projection relative to the thickness of a hole is relevant to the projections/holes of Yoon in combination with Hovi. Ans. 27-28. That Jeon's projection is not flat does not undermine the relevance of Jeon's teaching regarding the length of the projection and does not identify a lack of evidentiary support for the rejection, which relies on Yoon and Hovi, not Jeon, to teach a flat projection. Ans. 28. Appellants' arguments regarding damage to the flat projection and contamination of the circuit board in the proposed combination are not supported by evidence. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot take the place of evidence). Furthermore, Appellants fail to explain how these supposed shortcomings of the prior art are solved by the claimed invention. Appellants' argument that the Examiner's proposed modification of Yoon and Hovi in view of Jeon would not permit a user to remove the protection circuit from the cap, Reply Br. 20, is untimely and will not be considered. 37 C.F.R. § 41.41(b)(2); Nakashima, 2010 WL 191183 at *1. Based on the foregoing, the weight of the evidence supports the Examiner's conclusion of obviousness. Therefore, the rejection of claim 31 under 35 U.S.C. § 103(a) is sustained. 12 Appeal2014-007590 Application 11/979,268 Claim 32 The Examiner that finds that the combination of Yoon and Hovi teaches first and second circuit board side surfaces that are shorter than third and fourth circuit board side surfaces, as recited in claim 32, but does not teach that the projection is on the shorter side, as required when claim 32 is read together with claim 30. Final Action 8. 4 The Examiner that finds that Kruger teaches connecting two parts of a battery by positioning projections and holes around the entire periphery, including both the short sides and long sides, of each respective part. Id. (citing Kruger Fig. 2, i-f 22). The Examiner concludes that it would have been obvious to modify the combination of Yoon and Hovi to include multiple projections/holes around the periphery, including the short sides, to provide good lock and alignment of the two parts to be joined. Id. Appellants argue that Kruger is not relevant because it does not teach a circuit board and case, App. Br. 26; that the Examiner does not provide a sufficient reason to modify the combination of Yoon and Hovi because there is no finding that it would have provided inferior locking or alignment, id. at 28; and that the Examiner relies on Kruger to teach a feature (multiple projections/holes) that is not recited in claim 32, id. Upon consideration of the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify 4 Appellants repeatedly quote from page 8 of the Final Action, arguing that the Examiner admits that the combination of Yoon and Hovi does not teach the features of claim 30. App. Br. 14--15, 16, 19, 27; Reply Br. 3, 5, 13. We are not persuaded by Appellants' argument, which takes the Examiner's statement out of context in attempt to change its meaning. 13 Appeal2014-007590 Application 11/979,268 reversible error, and we find that a preponderance of evidence supports the Examiner's conclusion that the subject matter of claim 32 is unpatentable over the applied prior art. We sustain the rejection of claim 32 based on the Examiner's findings of fact, conclusions of law, and rebuttals to Appellants' arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. Appellants do not persuade us that the Examiner errs in concluding that the cited teaching of Kruger is relevant to the positioning of projections/holes for coupling a protection circuit board to a case, as taught by the combination of Yoon and Hovi. On this record, we are persuaded that the Examiner's rationale for combining the teachings of Yoon, Hovi, and Kruger is sufficient, without a need for finding that the combination of Yoon and Hovi is inferior in any respect. The Examiner finds that locking and alignment would have been improved by providing multiple projections and holes around the periphery, including the short sides, of the circuit board and case. Final Action 8, Ans. 34. That finding provides a sufficient rationale for combining the cited teaching of Kruger with the cited teachings of Yoon and Hovi. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("there must be some articulated reasoning with some rational underpinning" for combining elements in the manner claimed, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That claim 32 does not recite multiple projections or holes around the periphery does not identify error in the Examiner's findings or conclusions because the claim does not exclude such a configuration. 14 Appeal2014-007590 Application 11/979,268 Based on the foregoing, the weight of the evidence supports the Examiner's conclusion of obviousness. Therefore, the rejection of claim 32 under 35 U.S.C. § 103(a) is sustained. CONCLUSION OF LAW AND DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a) (1). AFFIRMED 15 Copy with citationCopy as parenthetical citation