John P. Bilezikjian et al.

Patent Trials and Appeals Board

Nov 25, 2019

14281941 - (D) (P.T.A.B. Nov. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/281,941 05/20/2014 John P. Bilezikjian 83387817 3792
28866 7590 11/25/2019
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
RANKINE, TARIKH KANEM
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
11/25/2019 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):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN P. BILEZIKJIAN, THOMAS J. COUPAR,
and JAMES J. GIBBONS
____________

Appeal 2019-000593
Application 14/281,941
Technology Center 2800
____________

Before JAMES A. WORTH, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Ford Global Technologies LLC, a
subsidiary of Ford Motor Company, as the real party in interest. Appeal
Br. 1.
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The invention is generally directed to an assembly and process for
automating a battery discharging process. Spec. ¶ 1. The Specification
explains that a high voltage battery may need to be discharged prior to
transporting or storing the battery. Id. ¶ 2. According to the Specification,
the prior art accomplishes this by using a decade box that includes a plurality
of resistors of different values configured to provide a specific resistance.
Id. The drawback of using a decade box is that it requires an operator to
correctly configure the decade box to match the resistance to a voltage of the
specific battery. Id. ¶ 3. The invention overcomes the prior art drawback by
providing a method and assembly that automate discharging of a high
voltage battery to reduce the time required for an operator to monitor
discharging the battery. Id. ¶ 7. Claim 1 illustrates the subject matter
claimed and is reproduced below:
1. A method of discharging a battery comprising the
steps of:
connecting the battery to a variable resistor;
automatically adjusting the resistor with a controller to
provide a constant load value that achieves a desired state of
charge of the battery;
discharging the battery using the adjusted resistor.

Independent claim 7 is directed to a similar method while independent
claim 12 is directed to a battery discharging assembly used to practice the
methods of claims 1 and 7.
Appellant requests review of the following rejections from the
Examiner’s Non-Final Office Action dated July 3, 2017:
I. Claims 1 and 3–6 rejected under AIA 35 U.S.C. § 103 as
unpatentable over Darragh (US 2013/0307476 A1, published Nov. 21, 2013)
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and Sheng (US 2012/0245872 A1, published Sept. 27, 2012).

II. Claim 2 rejected under AIA 35 U.S.C. § 103 as unpatentable
over Darragh, Sheng, and Chen (US 2006/0132087 A1, published Jun. 22,
2006).

III. Claims 7, 10, and 11 rejected under AIA 35 U.S.C. § 103 as
unpatentable over Christensen (US 2013/0200855 A1, published August 8,
2013) and Darragh.

IV. Claim 8 rejected under AIA 35 U.S.C. § 103 as unpatentable
over Christensen, Darragh, and Chen.

V. Claim 9 rejected under AIA 35 U.S.C. § 103 as unpatentable
over Christensen, Darragh, and Sheng.

VI. Claims 12 and 17 rejected under AIA 35 U.S.C. § 103 as
unpatentable over Christensen and Darragh.

VII. Claim 13 rejected under AIA 35 U.S.C. § 103 as unpatentable
over Christensen, Darragh, and Chen.

VIII. Claims 14–16 rejected under AIA 35 U.S.C. § 103 as
unpatentable over Christensen, Darragh, and Sheng.

OPINION
Rejection I under 35 U.S.C. § 103 (Claim 1)
Appellant presents arguments only for independent claim 1 for this
rejection. See generally Appeal Br. 6–8. Accordingly, we select
independent claim 1 as representative of the subject matter claimed and
decide this ground of rejection based on the arguments presented for claim 1.
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s rejections of claims 1 and 3–6 under
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35 U.S.C. § 103 for the reasons the Examiner provides. We add the
following for emphasis.
Claim 1
Claim 1 is directed to a method that automates discharging of a high
voltage battery.
The Examiner finds that Darragh teaches a method of discharging a
battery that comprises using a controller to automatically provide a constant
load value to a fixed resistor load bank that achieves a desired state of
charge of the battery. Non-Final Act. 5–6. The Examiner finds that
Darragh’s method differs from the claimed invention in that Darragh does
not teach using a variable resistor and discharging the battery by adjusting
the variable resistor. Non-Final Act. 5–6. Darragh, however, discloses the
use of different expected resistances for a versatile battery service unit that
handles multiple products. Darragh ¶ 42. The Examiner finds that Sheng
teaches it is known to use a variable resistor in discharging power from a
battery. Non-Final Act. 6. The Examiner determines that it would have
been obvious to one of ordinary skill in the art to use Sheng’s variable
resistor in Darragh’s method to match battery resistance to load resistance
when using different sized batteries. Id.
Appellant argues that Darragh’s controller 120 does not adjust a
resistor because the controller does not connect to the discharger 118, which
connects to a high voltage load bank connector 210. Appeal Br. 6.
Appellant also contends that Darragh discloses controller 120 as optional
and that the battery service unit 106 may provide some control capability
independent of the controller 120. Id. Appellant additionally argues that
Darragh teaches that battery service unit 106 includes a fixed resistive load
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bank or electronic load. Id. Appellant then argues that Shen teaches a
battery tester and not a battery discharger. Id. at 7. According to Appellant,
Sheng discloses a battery testing routine to complete a detecting routine that
determines the health of the battery. Id. Thus, Appellant contends that
neither Darragh nor Sheng teach automatically adjusting a resistor with a
controller to provide a constant load value to achieve a desired state of
charge of the battery because Darragh has no variable resistor and Sheng is
using the controller to create a “detecting curve” to determine the health of
the battery. Id. at 8.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness. It is well settled that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425–426 (CCPA 1981) (“The test [for obviousness] is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”).
As the Examiner finds, Darragh teaches that instructions executing on
controller 120 oversee operation of the discharge unit among other
components. Ans. 3–4; Darragh ¶ 38. In addition, Darragh discloses that
[c]ontroller 120 may be integrated into battery service unit 106
in addition to implementations including an external element.
Battery service unit 106 may include interface elements
providing some control capability of battery service interface
114, charger unit 116, and discharger unit 118 independent of
controller 120.

Darragh ¶ 38 (emphasis added).
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Based on this disclosure, one skilled in the art would reasonably infer
that Darragh’s disclosure of providing additional or other control capability
independent of controller 120 strongly infers that controller 120 exerts
control over discharger unit 118. See In re Fritch, 972 F.2d 1260, 1264–65
(Fed. Cir. 1992) (holding that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom). Therefore, the
Examiner’s analysis that controller 120 would also control the resistors in
discharge unit 118 is reasonable. Ans. 4.
Appellant’s arguments regarding Sheng are also unpersuasive because
the Examiner principally relies on Sheng to teach that it is known to use a
variable resistor in discharging a battery. Non-Final Act. 6. Appellant’s
argument does not dispute this finding.
While the Examiner and Appellant acknowledge that Darragh does
not teach the use of a variable resistor (Non-Final Act. 6; Appeal Br. 6),
Darragh recognizes that battery discharges may require different discharge
rates through the use of resistors in discharge unit 118 based on battery
characteristics. Darragh ¶¶ 30, 39. In fact, Darragh teaches embodiments
that can be configured to handle products having different voltages or
resistances. Id. ¶ 42. Darragh also teaches that the battery service unit
includes a discharger (a fixed resistive load bank or an electronic load) and
2) a variable voltage constant current or constant voltage power supply
among other items. Id. ¶ 41. These disclosures suggest that Darragh teaches
as desirable to have a battery service unit and discharger that are versatile to
accommodate different types of products.
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Further, Appellant acknowledges in the Specification that it is known
to configure resistors to match the resistance to a voltage of the specific
battery. Spec. ¶ 3. Thus, the capability to vary the resistors to achieve a
desired resistance is well within the skill in the art, albeit manually.
Appellant also acknowledges that the invention modifies a manual technique
for configuring resistors by using a controller in combination with a variable
resistor to match the resistance to a voltage of the specific battery. Spec. ¶ 4.
It is well settled that it is within the ordinary skill to broadly provide a
mechanical or automatic means to replace manual activity which has
accomplished the same result. In re Venner, 262 F.2d 91, 95 (CCPA 1958)
(citing In re Rundell, 48 F.2d 958, 959 (CCPA 1931)). Sheng exemplifies
the use of a variable resistor in determining a proper resistance of a load for
a battery according to the battery capacity, the battery voltage, etc. Sheng ¶
9. In addition, Sheng’s use of a variable resistor replaces the prior art’s
fixed resistance of a load that leads to imprecise testing results. Id. ¶ 6.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1
and 3–6 under 35 U.S.C. § 103 for the reasons the Examiner presents and we
provide above.
Rejection II under 35 U.S.C. § 103 (Claim 2)
Claim 2 recites a method comprising a further step of connecting a
shorting bar to the discharged battery. According to the Specification, the
shorting bar prevents voltage rebound after the battery is discharged but still
connected to the assembly. Spec. ¶ 15.
The Examiner finds Chen, directed to an electronic device with
function of protection against abnormal charging, teaches connecting a
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shorting bar, noted as a ground terminal, to a discharged battery. Non-Final
Act. 9; Chen Figure 1, ¶¶ 1, 17.
Appellant argues Chen does not teach using a shorting bar in a
discharged battery but, instead on a charged battery. Appeal Br. 9.
This argument lacks persuasive merit. As the Examiner notes, Chen
teaches connecting to a shorting bar after a discharge for protection
purposes. Ans. 5. Appellant has not adequately explained why one skilled
in the art, using no more than ordinary creativity, would not have been
capable of incorporating Chen’s shorting bar to the assembly from the
combined teachings of Darragh and Sheng given that it provides a desirable
safety feature for batteries experiencing variations in current. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”); see also In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of
one of ordinary skill in the art).
Accordingly, we affirm the Examiner’s prior art rejection of claim 2
under 35 U.S.C. § 103 for the reasons the Examiner presents and we provide
above.
Rejection III under 35 U.S.C. § 103 (Claim 7)
Appellant presents arguments only for independent claim 7. We limit
discussion to this claim with the understanding that claims 10 and 11 stand
or fall with claim 7.
Claim 7 differs from the method of claim 1 in that it recites a specific
step of discharging the battery using the resistor while a controller
automatically adjusts resistance of the resistor as a function of an operating
sequence for the resistor to achieve a desired state of charge of the battery,
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wherein the sequence is selected from a plurality of predetermined
sequences.
The Examiner finds Christensen teaches a method of discharging a
battery that differs from the claimed invention in that Christensen does not
teach a function of an operating sequence for the resistor requiring selecting
a sequence from a plurality of predetermined sequences. Non-Final Act. 9–
10. The Examiner finds Darragh teaches the missing feature and determines
that it would have been obvious to one of ordinary skill in the art a to modify
a controller so that it automatically adjusts resistance of the resistor as a
function of an operating sequence for the resistor to achieve a desired state
of charge for the purpose of discharging to levels that meet different
scenarios. Id. at 10.
Appellant argues that Christensen discloses resistors that are internal
to the battery 102 (i.e., built-in) and, thus, does not teach connecting the
battery to a variable resistor, with resistance controlled by a controller, as
part of its discharging process. Appeal. Br. 10. Appellant further contends
that, while the other resistor 114 may be variable, Christensen does not teach
or suggest adjusting the resistance of the resistor with the controller. Id.
We are unpersuaded of reversible error by these arguments. The
Examiner contends that Appellant is responding to the wrong element
pointed out in rejection. Ans. 6. According to the Examiner, the rejection
relies on a load 114 that is separate from the energy storage device 102
shown. Ans. 6; Christensen Figure 1. The Examiner further explains that
the energy storage device is the battery and the load noted as a variable load
resistor, which is separate from the battery and, therefore, not internal to the
battery. Ans. 6; Christensen ¶ 18. The Examiner asserts that Christensen
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discloses that the resistance of the load is selected based upon an internal
resistance of the strings and controlled by the controller 104 to modify the
resistance of the internal load by adjusting the resistance of the load using a
variable resistor within the load 114. Ans. 6; Christensen ¶¶ 22, 26.
Appellant replies that the portions of Christensen relied upon by the
Examiner do not teach the controller 104 controlling the resistance of the
resistor 114 while discharging the battery to achieve a desired state of charge
of the battery, as recited in claim 7. Appeal Br. 10. According to Appellant,
Christensen teaches that controller 104 varies the resistors that are internal to
battery 102 during discharge to avoid overheating. Appeal Br. 10; Reply Br.
4–5; Christensen ¶¶ 20–27.
We are unpersuaded of reversible error in the Examiner’s
determination of obviousness. Christensen discusses an embodiment
comprising a variable load resistor 114. Christensen ¶ 18. Christensen also
discloses in that same paragraph that “[t]he controller 104 is further operably
coupled to a memory 116 in which programmed instructions are stored.” Id.
According to Christensen, “the controller 104 electrically controls the
switching device 112 to control the flow of current from the battery 102
through the load 114 based upon the program instructions stored in the
memory 116” such that “a portion of heat is dissipated in the load 114”
during a battery discharge process. Id. ¶ 19. One skilled in the art would
infer from this disclosure that Christensen’s controller 104 controls the
resistance of the variable resistor 114 while discharging the battery to
achieve a desired state of charge of the battery, as recited in claim 7. Fritch,
972 F.2d at 1264–65. Therefore, we agree with the Examiner’s findings.
Ans. 6.
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While Appellant argues that Christensen’s paragraph 26 is specifically
discussing the resistance of the internal load within the battery (Reply Br. 4–
5), we note that the discussion is in the context of “some embodiments.” It
is well settled that a reference may be relied upon for all that it discloses and
not merely the preferred embodiments as suggested by Appellant. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“[A]ll disclosures of the prior art, including unpreferred embodiments, must
be considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)));
In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a
prior art reference’s disclosure is not limited to its examples). At best,
Christensen is highlighting an alternate preferred embodiment in paragraph
26 and Appellant has not explained adequately why this embodiment limits
Christensen’s broader disclosure. See Merck, 874 F.2d at 807; Fracalossi,
681 F.2d at 794.
Appellant argues that Christensen is limited to one scenario
(emergency) and does not suggest multiple scenarios as claimed. Appeal Br.
11. Thus, Appellant contends that there is no reason to employ the multiple
scenarios of Darragh in Christensen. Id.
We find these arguments lack persuasive merit for the reasons the
Examiner presents. Ans. 7.
Moreover, Christensen’s disclosure is not as limited as Appellant
argues. Christensen teaches battery system configured to reduce the risk of
uncontrolled rapid discharge of a battery and that reduces the electrical or
electrochemical energy stored in the battery rapidly, while minimizing the
risk of fire or explosion. Christensen ¶¶ 2, 4. Christensen discloses the
emergency condition as an example. Id. ¶ 29. Thus, given Christensen’s
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broad disclosure and Darragh’s disclosure of additional scenarios, including
an emergency scenario where controlled discharge of a battery is desirable
(see Darragh ¶¶ 31, 56), Appellant has not explained adequately why one
skilled in the art, using no more than ordinary creativity, would not have
been capable of adapting Christensen’s process for multiple scenarios where
controlled discharge of a battery is desirable. See KSR, 550 U.S. at 421;
Sovish, 769 F.2d at 743.
Accordingly, we affirm the Examiner’s prior art rejection of claims 7,
10, and 11 under 35 U.S.C. § 103 for the reasons the Examiner presents and
we provide above.
Rejection V under 35 U.S.C. § 103 (Claim 9)
Claim 9 recites that the resistance of the resistor is varied as a
decreasing step function of time during battery discharging.
The Examiner relies on the additionally cited reference to Sheng for
this feature. Non-Final Act. 12–13; Sheng Figure 7 and ¶¶ 46–47.
Appellant argues that Sheng’s Figure 7 teaches an on-off-on-off
loading and unloading function and does not teach or suggest a decreasing
step function for varying the resistor resistance. Appeal Br. 13.
We are unpersuaded of reversible error by this argument for the
reasons the Examiner expresses. Ans. 8.
Moreover, Appellant does not direct us to any definition of the term
“decreasing step function” that would exclude Sheng’s disclosed on-off-on-
off loading and unloading function. See Ans. 6. Nor does Appellant argue
any criticality with respect to the use of the claimed decreasing step
function. Thus, based on our independent review of Sheng’s Figure 7, we
determine that the shape of the discrete curves delineated therein are within
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the broadest reasonable interpretation of a step function. In addition,
Christensen discloses as conventional to use a desirable current profile
throughout the discharge process in accordance to set criteria. Christensen ¶
26. Therefore, Appellant has not adequately explained why one skilled in
the art, using no more than ordinary creativity, would not have had reason to
apply and would not have been capable of applying a desirable profile for a
battery discharge process such as the one disclosed by Sheng. See KSR, 550
U.S. at 421; Sovish, 769 F.2d at 743.
Accordingly, we affirm the Examiner’s prior art rejection of claim 9
under 35 U.S.C. § 103 for the reasons the Examiner presents and we provide
above.
Rejections IV (Claim 8), VI and VII (Claim 12), and VIII (Claim 15),
all under 35 U.S.C. § 103
Appellant presents a line of arguments for claims 8, 12, and 15 that is
substantially the same as the arguments presented for claims 2, 7, and 9,
respectively. Appeal Br. 11–12, 13–15, and 17.2
We remain unpersuaded by these arguments for the reasons given
above in our previous discussion of these arguments.
Accordingly, we affirm the Examiner’s prior art rejections of claims 8
and 12–17 under 35 U.S.C. § 103 for the reasons the Examiner presents and
we provide above.

2 Appellant relies on the arguments presented for claim 12 in addressing the
rejection of dependent claim 13 (Rejection VII). Appeal Br. 16. Therefore,
claim 13 stands of falls with independent claim 12.
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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6 § 103 Darragh, Sheng 1, 3–6
2 § 103 Darragh, Sheng,
Chen
2
7, 10, 11 § 103

Christensen,
Darragh
7, 10, 11
8 103 Christensen,
Darragh, Chen
8
9 103 Christensen,
Darragh, Sheng
9
12, 17 103 Christensen,
Darragh
12, 17
13 103 Christensen,
Darragh, Chen
13
14–16 103

Christensen,
Darragh, Sheng
14–16
Overall
Outcome
1–17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2017).

AFFIRMED